Authored by: Jeremy J. Gustrowsky
A recent decision from the Federal Circuit clarified how far the Patent Office can go in preventing patent owners from reclaiming lost ground after losing claims in an inter partes review (IPR). The case centered on SoftView LLC’s U.S. Patent No. 7,461,353, which covers technology for displaying internet content on mobile devices. After some of SoftView’s claims were canceled in an IPR, the Patent Trial and Appeal Board (PTAB) used a Patent Office rule—37 C.F.R. § 42.73(d)(3)(i)—to block SoftView from obtaining new or amended claims that were not “patentably distinct” from those already canceled.
SoftView argued that this estoppel rule was too broad and that the Patent Office lacked the authority to create such a substantive rule. The Federal Circuit disagreed, holding that the Patent Office did have the authority under the America Invents Act to issue this regulation. The court explained that the rule helps maintain the integrity of IPR proceedings by stopping patent owners from simply re-filing claims that are essentially the same as those already found invalid.
However, the court also found that the Patent Office went too far when it applied the estoppel rule to claims that had already been issued and were not newly obtained or amended. The regulation, the court said, only applies to “obtaining” new claims, not to “maintaining” existing ones. As a result, the court affirmed the PTAB’s decision as it applied to amended claims, but vacated and sent back the decision as it applied to already issued claims.
This decision is important for patent owners and challengers alike. It confirms that the Patent Office can block attempts to reintroduce claims that are not meaningfully different from those previously canceled, but it also sets a limit: the estoppel rule does not apply to existing claims that survived earlier proceedings. Patent owners should be careful when amending claims after an IPR loss, as those amendments will be closely scrutinized for similarity to canceled claims.