Federal Circuit Clarifies Scope of Estoppel Provision and Provides Guidance on “Patentably Distinct” Claims
On 26 July 2024, the Federal Circuit entered its decision in SoftView LLC, v. Apple Inc.1 holding that patent owner estoppel2 applies to newly presented and amended claims, but does not apply to issued claims. The Federal Circuit also confirmed that patent owner estoppel prevents a patent applicant from later obtaining a patent claim that is “not patentably distinct” from a finally refused or cancelled claim, but that patent owner estoppel does not apply to defending issued, unamended claims.
In an inter partes review (IPR), the Patent Trial and Appeal Board (the Board) found unpatentable 18 of the 319 claims of U.S. Patent No. 7,461,353 (the ’353 Paten”).3 Upon conclusion of the IPR, the previously stayed reexaminations resumed.4 In the reexaminations, SoftView amended 107 of the challenged claims to reflect subject matter from the various claims found unpatentable in the IPR.5 The examiner maintained the obviousness rejections using a subset of the art from the IPR and the applicant appealed to the PTAB. The Board reversed the examiner’s obviousness determination, but entered a new ground of rejection, holding both the amended and unamended original claims to be “not patentably distinct” from the claims found obvious in IPR.
SoftView challenged the Board’s application of section 42.73(d)(3)(i) to issued claims. The Federal Circuit held that section 42.73(d)(3)(i) does not apply to issued claims, only to new or amended claims.6 Namely, “the regulation applies to ‘obtaining’ a claim—not maintaining an existing claim.”7 The Federal Circuit found that “[d]rawing a distinction between obtaining a new claim and maintaining a previously issued claim makes sense,” because maintaining an issued claim is not circumventing an adjudication decision, which the estoppel provision is designed to prevent.8
The Federal Circuit affirmed the Board’s application and methodology in determining whether the amended claims are “patentably distinct” from those found obvious in IPR.9 The Board focused on “the differences in subject matter between the claims,” which is analogous to an obviousness analysis.10 The Board properly applied a KSR-type analysis to the amended claims using the canceled claims rather than the prior art.11
This decision confirms the scope of the estoppel provision while providing guidance on what constitutes patentably distinct between amended and canceled claims.
By Jason Engel, Erik Halverson and Jared Lund
Footnotes:
1 SoftView LLC, v. Apple Inc., 2023-1005 (Fed. Cir. July 27, 2024).
2 37 C.F.R. § 42.73(d)(3)(i)
3 IPR2013-00007.
4 Proceeding No. 95/000,634, Proceeding No. 95/002,132, Proceeding No. 90/009,994.
5 Proceeding No. 90/009,994 (combining subject matter from multiple dependent claims in the amended claims).
6 2023-1005, at 12–14.
7 Id. at 14.
8 Id.
9 Id. at 14–15.
10 Id.
11 Id. at 15.