Thompson Coburn Intellectual Property Partner, Michael Parks, spoke with World IP Review about the recent US Supreme Court decision denying Apple and Broadcom's request to raise patent invalidity challenges against Caltech. This decision has implications for inter partes review (IPR) estoppel and highlights the influence of universities in patent litigation.
As a result, the article explains that Apple and Broadcom will face a jury trial on damages without a patent invalidity defense. Michael stated, "Absent a settlement among the parties, the next consequential step in this case likely will be the new jury trial where, to comply with the Federal Circuit's damages ruling on the patents found infringed, Caltech will simply have to present a damages case where the same royalty rate is applied against the accused Broadcom WiFi chips and the accused Apple products incorporating those chips."
The case clarified that IPR estoppel applies to all grounds that could have been reasonably asserted against the claims included in the petition, not just the ones explicitly raised.
"Because the Supreme Court denied certiorari, this is now the law of the land. It means IPR patent challengers will need to make sure they do their homework comprehensively before filing an IPR petition to ensure they have captured all reasonable grounds for challenging the claims included in the petition," Michael explained.
In addition, he said, “This case is also an example of a university flexing its muscle with its patent portfolio. Universities can be formidable adversaries because they often have strong IP portfolios, and typically are not subject to countersuits for infringement by their targets because they typically don’t actually sell products.”
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