January 25, 2018

Second and Third Bites at the Apple; Subsequent IPR Losses undo IPR Win

In Maxlinear, Inc. v. CF Crespe LLC, [2017-1039] (January 25, 2018), the Federal Circuit vacated and remanded the PTAB’s determination that dependent claims were not unpatentable in view of the Federal Circuit’s intervening affirmance of a second IPR that held claims 1 and 17 unpatentable.

The case involved U.S. Patent No. 7,075,585 on a broadband television signal receiver for receiving multi-standard analog television signals, digital television signals and data channels.  The Board found the only two independent claims, 1 and 17, were not shown to be unpatentable and thus did not reach the patentability of the dependent claims.

The Federal Circuit held that the two IPRs that found claims 1 and 17 unpatentable were binding “as a matter of collateral estoppel” in this case.  The fact that the other IPRs became final while this case was pending on appeal is irrelevant.  The preclusive effect of the prior adjudications, and subsequent affirmations, has finally resolved the issue of the unpatentability of independent claims 1 and 17 and dependent claim 20 in this proceeding.  Thus, the sole remaining question at issue is whether the dependent claims 4, 6-9, and 21, not addressed in the earlier IPRs, are unpatentable.

Since the patentability of claims 1 and 17 was the sole basis for the Board’s decision in this IPR, and the Board had not separately addressed the dependent claims, the Federal Circuit set aside the decision as to the dependent claims and remanded for further consideration.