Federal Circuit Clarifies Reach of Patent Estoppel in SoftView v. Apple

In SoftView LLC v. Apple Inc., No. 23-1005, (Fed. Cir. July 26, 2024), the Federal Circuit partially vacated and remanded the PTAB’s decision finding certain claims of U.S. Patent No. 7,461,353 (’353 patent) unpatentable.

After the PTAB found 18 of the 319 claims of the ’353 patent unpatentable in an IPR, SoftView sought to amend 107 of the ’353 patent claims in an ex parte reexamination, which the PTO found unpatentable. On appeal, the Board reversed the Examiner’s obviousness rejection but entered a new ground of rejection, finding that each amended claim is essentially the same as a canceled claim or merely a combination of limitations that had previously invalidated. SoftView appealed, arguing that the Board misapplied the estoppel provision in 37 C.F.R. § 42.73(d)(3)(i) and that the PTO lacked authority to promulgate it.

The Federal Circuit affirmed the PTO’s statutory authority to promulgate § 42.73(d)(3)(i), which falls within the PTO’s authority to issue regulations to ensure the integrity of the trial procedures. The Federal Circuit further held that § 42.73(d)(3)(i) goes beyond the common law estoppel by calling for a comparison between the claims an applicant is obtaining and the finally refused or cancelled claim. It then vacated the Board’s decision as to the issued claims on appeal but affirmed as to the amended claims because the regulation applies to “obtaining” a claim, not maintaining an existing claim.