The following case study was recently written by Jeffrey E. Danley, partner at Seed IP Law Group.

CASE STUDY - Cal. Tech. v. Broadcom: The Federal Circuit Strengthens the IPR Estoppel Provision and Strikes Down a Multi-Tiered Royalty Rate Argument

In its recent decision in California Institute of Technology v. Broadcom Ltd., the Federal Circuit made two important holdings that significantly impact patent litigation. The first confirms a broad interpretation of the estoppel provision contained in the American Invents Act (“AIA”). Under this interpretation, the estoppel provision applies not just to prior art references that were actually part of an inter partes review (“IPR”) proceeding but also to any prior art reference that could have been part of that proceeding.  

The second holding involves a multi-tiered royalty structure that the plaintiff used to apply different royalty rates to products at issue in the litigation. Although the Federal Circuit overruled the application of multiple royalty rates in this case, the decision did not state that such a calculation is per se improper but instead stated that the plaintiff had not, in that specific case, provided sufficient evidence to support such a calculation. That portion of the decision provided clues that could be used in future cases to apply a multi-tiered royalty rate as part of a reasonable royalty calculation.

Click here (PDF) to read the full case study.

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About Jeffrey Danley

Jeff focuses his practice on IP enforcement, defense, and litigation matters across all industry groups. In 1999, he received a Bachelor in Electrical Engineering with Highest Honors from Georgia Institute of Technology, where he focused his studies on communication networks and signal processing. Jeff received an M.S. degree in Electrical Engineering from the University of California at Berkeley in 2001, where he focused his studies and research on communication networks. He was awarded his J.D. from the University of California - Berkeley School of Law (Boalt Hall) in 2005.

Jeff is admitted to the state bars of California and Washington, and is registered to practice before the U.S. Patent and Trademark Office. He is a member of the Washington State Patent Law Association (WSPLA).

Learn more about Jeffrey Danley.

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