This morning the Federal Circuit released one precedential opinion and one nonprecedential order. The opinion affirms in part and reverses in part a judgment of the Patent Trial and Appeal Board. The order remands a case appealed from the Patent Trial and Appeal Board for further proceedings. Here are the introductions to the opinion and order.
SoftView LLC v. Apple Inc. (Precedential)
Appellant SoftView LLC appeals from a decision of the Patent Trial and Appeal Board in two inter partes reexamination proceedings. Based on a prior decision in an inter partes review (“IPR”) proceeding, the Board held all claims of SoftView’s U.S. Patent No. 7,461,353 (“the ’353 patent”) invalid under the estoppel provision set forth in 37 C.F.R. § 42.73(d)(3)(i).
SoftView challenges the Board’s application of section 42.73(d)(3)(i) on various grounds. First, SoftView contends that the PTO improperly interpreted the regulation in a manner that gave it broader scope than the common law rule of collateral estoppel. Second, SoftView argues that the Patent and Trademark Office (“PTO”) lacks statutory authority to promulgate a regulation governing the estoppel effect of IPR decisions in subsequent proceedings before the PTO. Third, SoftView maintains that the regulation by its terms does not apply to claims that have already issued.
We uphold the validity of the regulation and the estoppel standard adopted in the regulation. With respect to the scope of the regulation, however, we agree with SoftView that the regulation applies to new claims or amended claims, but not to previously issued claims.
In re Zhu (Nonprecedential)
Upon consideration of the unopposed motion of the Director of the United States Patent and Trademark Office to remand this case to permit further proceedings before the agency “to resolve issues in the Board’s decision,” ECF No. 15 at 1,
IT IS ORDERED THAT:
(1) The motion is granted. The case is remanded to the agency for further proceedings consistent with this order.
(2) Each side shall bear its own costs.