Fresh From the Bench: Latest Precedential Patent Cases

CASE OF THE WEEK

Zyxel Comms. Corp. v. UNM Rainforest Innovations, Appeal Nos. 2022-2220, -2250 (Fed. Cir. July 22, 2024)

Our Case of the Week provided new guidance on amendment proceedings under the Patent Trial and Appeal Board’s 2019 Motion to Amend Pilot Program in AIA post-grant proceedings. The program allows for preliminary Board feedback and revisions to a patentee’s motion to amend disputed claims. In these cross-appeals from an inter partes review of a broadband communications patent owned by UNM Rainforest Innovations (“UNMRI”), the Federal Circuit found that the Board had correctly granted a motion to amend claims it found to be invalid, but remanded the issue of whether those substitute claims were themselves invalid as a matter of collateral estoppel in view of the Court’s disposition of other issues on appeal.

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ALSO THIS WEEK

SoftView LLC v. Apple Inc., Appeal No. 23-1005 (Fed. Cir. July 26, 2024)

In a second case last week that addressed estoppel issues, the Federal Circuit affirmed in part a decision by the Patent Trial and Appeal Board which applied the estoppel provisions of 37 C.F.R. § 42.73(d)(3)(i) to patent claims in an inter partes reexamination proceeding. That rule prohibits a patent owner from taking action inconsistent with the adverse judgment in various proceedings, including IPR proceedings. SoftView’s patent in this case was a heavily litigated one that had been subject to multiple IPR as well as reexamination proceedings. The latter had been stayed until after the IPR proceedings were concluded. During the IPR proceedings, most claims were canceled. In the reexamination proceedings, amended claims were pursued by combining elements of the canceled claims. The Board had rejected the claims, pursuant to Section 42.73(d)(3)(i). On appeal, the Federal Circuit affirmed that the rule had been properly promulgated and it applied to amended claims in reexamination proceedings. The Court held that it did not apply to issued claims.

The opinion can be found here.

Editors:

Nika Aldrich, Intellectual Property Litigation Group Leader, Schwabe, Williamson & Wyatt, P.C.

Jason A. Wrubleski, Shareholder