35 U.S.C. § 315(e) prohibits a petitioner in an Inter Partes Review (“IPR”) that results in a final written decision from asserting, in litigation, invalidity “on any ground that the petitioner raised or reasonably could have raised during that inter partes review.” 35 U.S.C. § 315(e)(2).
On April 3, 2023, the Federal Circuit Court of Appeals clarified the meaning of “reasonably could have been raised.” The court held “§ 315(e)(2) estops a petitioner as to invalidity grounds a skilled searcher conducting a diligent search reasonably could have been expected to discover, as these are grounds that the petitioner ‘reasonably could have raised’ in its petition.” Ironburg Inventions Ltd. v. Valve Corp., No. 2021-2296 at 33 (Fed. Cir. Apr. 3, 2023).
This opinion follows Ingenio’s March 9, 2023 Petition for Writ of Certiorari on a Federal Circuit decision in August 2022 that estopped Ingenio from relying on prior art Dezonno in litigation because “there is no reasonable argument that Ingenio could not have raised Dezonno” in IPR. Click-to-Call Techs. LP v. Ingenio, Inc., 45 F.4th 1363, 1370 (Fed. Cir. 2022). The petition seeks review of two issues:
- Whether 35 U.S.C. § 315(e)’s IPR estoppel provision applies only to claims addressed in the final written decision, even if other claims were or could have been raised in the petition; and
- Whether the Federal Circuit erroneously extended IPR estoppel under 35 U.S.C. § 315(e) to all grounds that reasonably could have been raised in the petition filed before an inter partes review is instituted, even though the text of the statute applies estoppel only to grounds that “reasonably could have [been] raised during that inter partes review.
Ingenio, Inc. v. Click-to-Call Tech., LP, petition for cert. pending, No. 22- (filed March. 9, 2023).