Estoppel Future Uncertain
As pointed out last month, the SCOTUS has sought the Solicitor General’s input in Apple et al., v. California Institute of Technology. If the case is taken up, the Court will consider limiting the scope of IPR estoppel to art that was included in the petition, and that art which reasonably could have been raised “during the IPR.”
At present, “reasonably could have raised” is assessed at the time the petition is drafted (i.e., what could have been included in the petition), not what could have been included in the later trial (which is effectively nothing). While it is far from certain whether the Court will take the case — let alone narrow estoppel— petitioners might still consider their stipulation wording until this dispute is settled.
Recall that the new PTO Director has made clear that the so-called “Sotera stipulation” will allow petitioners to avoid discretionary denials under 314(a). This stipulation typically explains that the Petitioner will agree to be bound to the same grounds as in the petition or any grounds that could have reasonably been raised in the petition. This is effectively the full range of statutory estoppel as presently applied by the CAFC. But, if that scope were to be narrowed by the SCOTUS to the same grounds as in the petition or any grounds that could have reasonably been raised during the trial, the stipulation would be far more expansive in scope than the statute.
Perhaps Petitioners might reword their stipulations in the interim to agreeing to be bound to the “the full range of statutory estoppel that would otherwise flow from the petition filing” or something along those lines (rather than spelling it out in terms of the CAFC’s understanding). Such language would effectively insulate the stipulation to any change in the law that would benefit the Petitioner.
Something for Petitioners to consider in the months ahead.