Before Bryson, Lourie, and Reyna. Appeal from the United States Patent and Trademark Office (“PTO”), Patent Trial and Appeal Board (“Board”).

Summary: Estoppel under 37 C.F.R. § 42.73(d)(3)(i) only applies to obtaining new or amended claims in the PTO and does not apply to maintaining already issued claims.

Apple and Motorola requested inter partes reexaminations of SoftView’s patent, which was directed to displaying internet content on mobile devices. Kyocera also filed a petition for inter partes review (“IPR”) of 18 of the 319 claims in SoftView’s patent. Apple also filed a separate request for ex parte reexamination, but the inter partes and ex parte reexaminations were stayed pending the outcome of Kyocera’s IPR. In the IPR, the Board found the 18 challenged claims of SoftView’s patent unpatentable as obvious.

After the IPR, the stays on the reexaminations were lifted. During the ex parte reexamination, SoftView amended various claims by combining limitations from multiple canceled claims from the IPR proceeding. Those amended claims issued in an ex parte reexamination certificate. Later, in the inter partes reexaminations, the Board rejected all pending claims, including the previously issued claims from the ex parte reexamination, as unpatentable under 37 C.F.R. § 42.73(d)(3)(i) because they were not “patentably distinct” from those that had been invalidated in the IPR. SoftView appealed the inter partes reexaminations, arguing, among other things, that the Board improperly applied estoppel under § 42.73(d)(3)(i) to previously issued claims.

Section 42.73(d)(3)(i) bars a patent owner from “obtaining in any patent: (i) A claim that is not patentably distinct from a finally refused or canceled claim.” The Federal Circuit agreed with SoftView that, by its terms, Section 42.73(d)(3)(i) only applies to “obtaining” a claim and not maintaining an existing claim. Thus, the Federal Circuit vacated the Board’s decision as to claims that were already issued.

SoftView also argued that the PTO did not have the authority to issue Section 42.73(d)(3)(i) because that regulation renders claims unpatentable based on a comparison to previously canceled claims, rather than to the prior art. The Federal Circuit rejected that argument, finding that the PTO’s regulations were lawfully promulgated under the PTO’s rulemaking authority. Thus, the Federal Circuit affirmed the Board’s decision barring SoftView from obtaining amended claims that were not patentably distinct from those canceled in the IPR proceeding.

Editor: Sean Murray

SOFTVIEW LLC v. APPLE INC.