Docket No. 2017-1039 (IPR2015-00592)
DYK, SCHALL, REYNA
January 25, 2018
Brief summary: Board’s decision that dependent claims were not shown to be unpatentable vacated and remanded “[s]ince the patentability of [independent] claims 1 and 17 was the sole basis for the Board’s decision in this IPR, and the Board has not separately addressed the dependent claims”.
Summary: MaxLinear appealed the Board decision upholding the patentability of claims 1-4, 6-9 and 16-21 of Crespe’s US 7,075,585 related to broadband TV receivers. MaxLinear only sought review of the decision with respect to dependent claims 4, 6-9, and 20-21. In its Final Written Decision (FWD) for this IPR (the ‘592 IPR), “[t]he Board declined to find claims 1 and 17 unpatentable over a combination” of prior art references, and therefore concluded the dependent claims were also not shown “by a preponderance of the evidence, that those claims are unpatentable” and “never mentioned any separate arguments” regarding those dependent claims. The FC panel opinion explained that “in a separate IPR, No. IPR2014-00728 (‘the ‘728 IPR’), claims 1 and 17 were held to be unpatentable”, a decision affirmed by FC in 2016. And in IPR2015-00615, claim 20 was held unpatentable, a decision affirmed by the FC in 2017. It also explained that “[e]ach of these IPRs had the same Board members as the ‘592 IPR but considered different prior art.” It also noted near the end of the opinion that while “the collateral-estoppel effect of an administrative decision of unpatentability generally requires the invalidation of related claims that present identical issues of patentability”, “collateral estoppel applies” as long as “the differences between the unadjudicated claims and adjudicated patent claims do not materially alter the question of invalidity” (Ohio Willow Wood, FC 2013; Bourns, US Ct. Cl. 1976). The FC panel also explained that “[b]oth parties agree that those prior decisions, having been affirmed by our court, are binding in this proceeding, as a matter of collateral estoppel” (“also known as issue preclusion”) and that it “applies in the administrative context” (B&B Hardware, US 2015 (issue preclusion applied to TTAB FWD); SkyKawke Techs., FC 2016; Mycogen Plant Sci., FC 2001). The FC panel noted that “[t]he fact that the ‘728 IPR became final while this case was pending on appeal is irrelevant” (Soverain Software, FC 2015), as was the fact “[t]hat MaxLinear was not a party to the other IPRs…since Cresta, the predecessor in interest to CRESPE, was a party to the original determination” (Blonder-Tongue, US 1971). The FC panel found that “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” with respect to the dependent claims at issue in this appeal “[s]ince the patentability of claims 1 and 17 was the sole basis for the Board’s decision in this IPR, and the Board has not separately addressed the dependent claims”. The Board’s decision was therefore “set aside as to the dependent claims and remand[ed] for further consideration” (SKF USA, FC 2001).