Federal Circuit Reverses and Remands Board Decision Upholding Patentability

Federal Circuit Reverses and Remands Board Decision Upholding PatentabilityMaxLinear, Inc. v. CF CRESPE LLC, No. 2017-1039, 2018 U.S. App. LEXIS 1930 (Fed. Cir. Jan. 25, 2018) (Before Dyk, Schall, and Reyna, J.) (Opinion for the court, Dyk, J.).

In an appeal from an IPR in which the Board upheld the patentability of several patent claims, the Federal Circuit vacated the decision and remanded to the Board with instructions to consider the patentability of certain dependent claims.

CRESPE is the owner of a patent directed to a receiver that processes an incoming television broadcast signal into a viewable medium for eventual display. MaxLinear petitioned for an IPR, and the Board instituted review of several claims as the ’592 IPR. In its final written decision, the Board found that MaxLinear failed to show that the challenged claims were unpatentable over the cited prior art references. Importantly, the Board limited its analysis to Claims 1 and 17, the only independent claims of the patent. MaxLinear appealed.

Meanwhile, the ’728 and ’615 IPRs were instituted against CRESPE’s patent by a third party. All three IPRs shared the same Board members, but each IPR considered different prior art.

In the ’728 IPR, the Board issued a final written decision that several claims, including the independent claims, were unpatentable. CRESPE’s predecessor (Cresta), appealed. The Court upheld that decision while the Maxlinear appeal from the ‘592 IPR was pending.

In the ’615 IPR, the Board held that an additional dependent claim was unpatentable over the cited prior art. CRESPE appealed, and the Court again affirmed the Board’s decision.

In this appeal, the parties agreed that the Court’s affirmation of the unpatentability rulings in the ’728 and ’615 IPRs are binding, as a matter of collateral estoppel. The Court explained that collateral estoppel, otherwise known as issue preclusion, applies to administrative proceedings. The fact that the ’728 IPR became final while this case was pending on appeal is irrelevant. Also irrelevant is the fact that MaxLinear was not a party to the ’728 and ’615 IPRs because Cresta, the previous owner of the patent, was a party to those proceedings.

The patentability of independent Claims 1 and 17 was the sole basis for the Board’s decision in this appeal from the ’592 IPR; the Board did not separately address the dependent challenged claims.

Accordingly, “the holding of unpatentability of claims 1 and 17 in the ’728 IPR, and the affirmance by our court, abrogates the basis for the Board’s decision” in the ’592 IPR. The Court vacated the Board’s ‘592 decision with respect to the independent claims and remanded certain dependent claims, for the Board to consider whether they “can survive the unpatentability of [the independent claims] from which they depend in view of the prior art cited in the ’728 IPR.” The Court further instructed the Board to “decide whether the remaining claims present materially different issues that alter the question of patentability, making them patentably distinct from claims 1 and 17.”

When the Federal Circuits affirms a final decision in an IPR that invalidates claims of a patent, collateral estoppel will apply in a co-pending appeal or IPR involving the same patent claims. The Patent Owner will be precluded from asserting the validity of those claims but may pursue other issues, such as other patent claims not already held invalid.



The Author

Robert Schaffer

Robert Schaffer is an intellectual property partner at Troutman Sanders. Bob applies more than 30 years of experience to IP counseling and litigation. His work includes patent procurement, strategic planning and transactional advice, due diligence investigations, district court patent cases, and Federal Circuit appeals. He regularly handles complex and high-profile domestic and international patent portfolios, intellectual property agreements and licensing, IP evaluations for collaborations, mergers, and acquisitions. In disputed court cases Bob’s work includes representing and counseling client in ANDA litigations, complex patent infringement cases and appeals, and multidistrict and international cases. In disputed Patent Office matters his work includes representing and counseling clients in interferences, reexaminations, reissues, post-grant proceedings, and in European Oppositions. For more information and to contact Bob please visit his profile page at the Troutman Sanders website.

Robert Schaffer

Joseph Robinson has over 20 years of experience in all aspects of intellectual property law. He focuses his practice in the pharmaceutical, life sciences, biotechnology, and medical device fields. His practice encompasses litigation, including Hatch-Waxman litigation; licensing; counseling; due diligence; and patent and trademark prosecution. He has served as litigation counsel in a variety of patent and trademark disputes in many different jurisdictions, and has also served as appellate counsel before the Court of Appeals for the Federal Circuit. Joe also focuses on complex inter partes matters before the U.S Patent and Trademark Office, inventorship disputes, reexaminations and reissues. His experience includes numerous interferences, a particular advantage in new U.S. Patent and Trademark Office post-grant proceedings. He also counsels on patent–related U.S. Food and Drug Administration issues, including citizen petitions, Orange Book listing, and trademark issues. For more information and to contact Joe please visit his profile page at the Troutman Sanders website.

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