Spotlight on Upcoming Oral Arguments – June 2024

The following arguments will be available to the public live, both in-person and through online audio streaming. Access information will be available by 9 AM ET each day of argument at: https://cafc.uscourts.gov/home/oral-argument/listen-to-oral-arguments/.

Monday, June 3, 2024, 10:00 A.M.

SoftView LLC v. Apple Inc., No. 23-1005, Courtroom 201, Panel A

Apple Inc. (“Apple”), Motorola Mobility LLC (“Motorola”), and Kyocera Corp. (“Kyocera”) requested Inter Partes Reexamination (“IPR”) of SoftView LLC (“SoftView”)’s U.S. Patent No. 7,461,353 (“the ’353 patent”), relating to scalable display of internet content on mobile devices, challenging all claims as obvious under 35 U.S.C. § 103. The ’353 patent also underwent a parallel proceeding in Ex Parte Reexamination requested by Apple. In Final Written Decisions, the Board found all challenged claims in the ’353 patent unpatentable under 35 U.S.C. § 103 and cancelled these claims. The Federal Circuit affirmed. All parties appealed to the Board and the Board rejected all claims under the new ground of 37 C.F.R. § 42.73(d)(3)(i). The Board denied SoftView’s petition for rehearing and held that the United States Patent and Trademark Office (“USPTO”) had authority to issue the regulation under 35 U.S.C. §§ 2 & 316. The Board held that the term “patentably distinct” in § 42.73(d) should carry the same meaning as in the interference and obviousness-type-double-patenting context. The Board held that estoppel under § 42.73(d) was distinct from common-law collateral estoppel and that it was not required to perform a common-law-collateral-estoppel analysis. The Board held that the different claim-construction standards applied in the IPR and after expiration did not defeat estoppel. The Board held that none of the additional limitations in SoftView’s non-cancelled claims rendered them patentably distinct from the cancelled IPR claims. Finally, the Board rejected SoftView’s argument that its decision was arbitrary and capricious for rejecting claims that had been confirmed in the Ex Parte Reexamination. On appeal, SoftView argues that § 42.73(d) estoppel does not apply to issued claims and that doing so   would be contrary to 35 U.S.C. §§ 301(a)(1) and 311 (pre-AIA), § 304, and § 316. Further, SoftView argues that “patentably indistinct” means “substantially” or “essentially the same.” SoftView argues that § 42.73(d) estoppel must apply traditional principles of collateral estoppel or issue preclusion, and that elements of collateral estoppel are not met. SoftView further argues that all claims on appeal are patentably distinct over all claims cancelled in the IPR. Lastly, SoftView asserts a violation of the Administrative Procedure Act (APA). In response, Apple and Motorola argue that the Board correctly applied the § 42.73(d) standard, and that the appealed claims are not patentably distinct from the cancelled IPR claims. Lastly, they argue that the Board did not violate the APA. The USPTO filed an Intervenor Brief, arguing that the preclusion rule in § 42.73(d) is a valid exercise of the USPTO’s rulemaking authority. Further, the USPTO argues that § 42.73(d) estoppel applies to reexaminations and the phrase “patentably distinct” should be given its long-established meaning in the obviousness-type double patenting sense. Lastly, the USPTO argues that it is not required to import common law preclusion elements into § 42.73(d)’s patentably distinct analysis.

Friday, June 7, 2024, 10:00 A.M.

Unification Technologies LLC v. Micron Technology Inc., No. 23-1348, Courtroom 201, Panel J

Micron Technology Inc., Micron Semiconductor Products, Inc., Micron Technology Texas, LLC, Dell Technologies Inc., and HP INC. (collectively, “Appellee”) filed three petitions for Inter Partes Review (“IPR”) alleging that claims of Unification Technologies LLC (“UTL”)’s U.S. Patent Nos. 8,762,658 (“the ’658 patent”), 8,533,406 (“the ’406 patent”), and 9,632,727 (“the ’727 patent”), relating to computer memory storage apparatuses, are unpatentable under 35 U.S.C. § 103. Kathi Vidal, now Director of the USPTO, served as lead counsel for Appellee’s IPRs. Shortly after UTL filed its Patent Owner Responses, Ms. Vidal was nominated to serve as Director of the USPTO. After the nomination, Ms. Vidal continued to represent Appellee in the IPRs, and moved to withdraw as counsel after being confirmed by the Senate. UTL filed motions to dismiss, alleging that the Administrative Patent Judges (“APJs”) in the IPR proceedings could not act with impartiality. The Board denied the motions to dismiss. Thereafter, UTL filed Requests for Director Review based on the Board’s alleged unresolved conflict of interest and failure to address the deficiencies in its unpatentability analysis. The Board denied UTL’s requests. UTL appealed and argues that Director Vidal’s prior involvement with the IPRs deprived UTL of due process. Next, UTL argues that the Board failed to address the motivation to modify the prior art reference and a reasonable expectation of success in doing so. Further, UTL argues that the Board erred by finding that the challenged claims are obvious in view of the prior art reference. In response, Appellee argues that UTL’s due process argument lacks merit, that UTL failed to identify any error in the Board’s obvious analysis, and that substantial evidence supports the Board’s factual findings regarding the teachings of the prior art reference. The USPTO filed an Intervenor Brief, noting that Director Vidal withdrew from representing the petitioners in the IPRs after her nomination, and that she established recusal procedures upon taking office. The USPTO also stated that while UTL moved to terminate the IPRs despite her recusal, the Board and Deputy Director of the USPTO specified that she was recused and denied UTL’s termination motions. The USPTO argues that Director Vidal’s recusal in these IPRs cures a conflict of interest, and that UTL failed to identify a due-process violation.