The Court of Appeals for the Federal Circuit has sparked debate following a recent ruling on the Patent Trial and Appeal Board's (PTAB) application of estoppel provisions in invalidating amended claims in inter partes reexaminations. Dissatisfied with the decision, appellant SoftView LLC has raised several points in filing for an en banc hearing.

SoftView's hearing request challenges the Federal Circuit panel's application of collateral estoppel to amended claims and the impact on the amendment process. The PTAB's reliance on issue preclusion, despite insufficient reasoning on obviousness, has been a point of contention.

SoftView's argument about the court applying precedent to cancelled claims—and its perception that the USPTO violated the Administrative Procedure Act—add to the issue's complexity.

The case underscores the importance of clarity and consistency in applying patent laws and procedures. Stay tuned for further developments as the legal community closely watches how this dispute unfolds.

In the original ruling, which was covered in a separate article, the CAFC held that the Patent Trial and Appeal Board (PTAB) properly applied the estoppel provision of 37 CFR § 42.73(d)(3)(i) in invalidating SoftView’s amended claims submitted in inter partes reexaminations based on a prior inter partes review (IPR) decision. However, the CAFC limited its application to new or amended claims and remanded the case for reconsideration of claims issued prior to the reexaminations.

ipwatchdog.com/...