Federal Circuit Clarifies Application of IPR Estoppel Provisions in Cases of Serial IPRs Brought by Different Entities

In Uniloc 2017 LLC v. Facebook Inc., No. 2019-1689 (Fed. Cir. Mar. 9, 2021), the Federal Circuit extended its earlier reasoning from the Covered Business Method PTAB proceeding context in Credit Acceptance Corp. v. Westlake Services, 859 F.3d 1044, 1050 (Fed. Cir. 2017) to the IPR context, by holding that when an estoppel-triggering event occurs after institution of an IPR, the PTAB’s application of the estoppel provision is judicially reviewable on appeal.  In this case, the estoppel-triggering event was a Final Written Decision in an earlier IPR that had been joined by Facebook.  On appeal, the Court upheld the PTAB’s dismissal of Facebook from a later pending IPR proceeding it initiated challenging claims of the same patent.  However, the estoppel was only applied to the claims that were the subject of the earlier IPR proceeding, and therefore the Court agreed that Facebook could remain in the later IPR proceeding as to claim 7 only, since that claim was not addressed by the earlier Final Written Decision.  The Court also clarified that where multiple petitioners are joined in an IPR proceeding, any estoppel that arises as to one of the petitioners after the proceeding is instituted will not automatically carry over to the other joined parties.  Rather, estoppel will only apply to any other parties who are determined to be either a real party in interest or a privy of the estopped petitioner, which is a factual determination.  Thus, even after Facebook was found to be estopped as to all but one claim in the later IPR that it had initiated, LG, which had joined that later IPR, was permitted to remain in the proceeding and maintain all of the original claim challenges.

The Court’s opinion may be found at http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/19-1688.OPINION.3-9-2021_1745086.pdf