SoftView LLC has recently filed a petition for en banc rehearing with the U.S. Court of Appeals for the Federal Circuit (CAFC), challenging a previous decision that applied the doctrine of collateral estoppel/issue preclusion to amended claims. The company argues that this decision incorrectly invalidated their amended claims based on a prior inter partes review (IPR) decision.
The CAFC’s original ruling upheld the Patent Trial and Appeal Board’s (PTAB) application of the estoppel provision of 37 CFR § 42.73(d)(3)(i) in invalidating SoftView’s amended claims. However, the court limited its application to new or amended claims, remanding the case for reconsideration of claims issued prior to the reexaminations.
SoftView’s petition highlights the PTAB’s acknowledgment of insufficient reasoning in the reexaminations appeal, noting that the Board’s decision effectively prevented SoftView from addressing the issue. The CAFC upheld the PTAB’s decision, citing the estoppel provision that prohibits a patent owner from acting inconsistently with an adverse judgment from an IPR proceeding.
In its en banc petition, SoftView argues that the application of the estoppel provision is contrary to patent laws and congressional intent. The company contends that the court’s decision undermines the process of amending claims to meet patentability requirements, potentially precluding any claim found unpatentable in a prior proceeding from being litigated.
SoftView disputes the lists of amended and issued claims in the panel decision, pointing out inaccuracies that need correction. The company argues that the Board and panel’s application of the estoppel provision contradicts general patent law and congressional intent. SoftView asserts that the correct claim construction was not applied in the IPRs, leading to the invalidation of otherwise patentable claims.
Furthermore, SoftView challenges the CAFC’s application of the doctrine of collateral estoppel, citing a four-part test from a previous case. The company argues that the PTAB failed to consider the elements of common law collateral estoppel and did not present evidence to support the application of estoppel.
The petition also raises concerns about the PTAB’s analysis of the cancelled claims, pointing out inconsistencies in the application of prior art references. SoftView argues that the PTAB’s use of KSR Int’l Co. v. Teleflex Inc’s instruction in the analysis was flawed and did not consider the unique claim limitations of the amended claims.
Finally, SoftView alleges that the USPTO’s decisions in this case violate the Administrative Procedure Act (APA) due to inconsistencies in their reasoning. The company highlights discrepancies in the PTAB’s findings on patentability distinctness in different proceedings, suggesting a lack of consistency in decision-making.
In conclusion, SoftView’s petition for en banc rehearing challenges the CAFC’s decision to apply the estoppel provision to invalidate their amended claims. The company argues that the application of estoppel is contrary to patent laws and undermines the process of amending claims for patentability. The petition raises important questions about the consistency and fairness of the USPTO’s decisions in patent disputes.
