Federal Circuit IP
Softview v. Apple
Case No. 23-1005, Precedential, (Fed. Cir. July 26, 2024)
Lourie, Bryson, Reyna
Facts/Background:
- Ex parte reexam, inter partes reexams, and inter partes review instituted with respect to US 7,461,353. Ex parte reexam and inter partes review proceedings stayed pending resolution of inter partes review.
- Inter partes review invalidates 18 claims. Other proceedings resume with respect to remaining claims. Amended claims survive ex parte reexam, similar amendments made in inter partes reexam leading to this appeal, other claims remain unchanged from those that originally issued.
- PTAB enters new rejection of all claims with respect to which inter partes reexam instituted under 37 C.F.R. § 42.73(d)(3)(i).
Issue: (1) Did the PTAB improperly interpret § 42.73(d)(3)(i) by giving it a broader scope than the common law rule of collateral estoppel? (2) Did the PTO lack statutory authority to promulgate a regulation governing the estoppel effect of IPR decisions in subsequent PTO proceedings? (3) Does § 42.73(d)(3)(i) apply to claims that have already issued?
Holding: (1) No, an estoppel standard similar to obviousness type double patenting or interferences is appropriate. (2) No, 35 U.S.C § 316(a)(4) grants authority. (3) No, “obtaining” means the regulation only applies to amended claims.
Analysis:
- The PTO’s preferred estoppel standard is appropriate because “patentably distinct” has a specialized meaning in the patent law context.
- 35 U.S.C. § 316(a)(4) instructs the PTO to establish regulations “establishing and governing inter partes review and the relationship of such review to other” patent proceedings. “[E]stablishing and governing inter partes review” should be interpreted as a broad grant of authority to promulgate rules on the substance, such as the estoppel effect of decisions.
- 42.73(d)(3)(i) relates to “obtaining” a claim, maintaining an already issued claims is not “obtaining” a claim and is not an attempt to circumvent an adverse judgment.
Takeaways:
- Post Loper Bright, PTO is likely to continue to have discretion to promulgate substantive regulations with respect to post grant proceedings.
- 42.73(d)(3)(i) can be used to simplify complicated obviousness analyses under narrow circumstances, and perhaps invalidate claims that would not be considered obvious under a traditional obviousness analysis.