Thursday, January 25, 2018

Intervening IPR decision requires vacation/remand of other IPR in MaxLinear, 2017-1039

The issue

The Board based its decision on an analysis of independent
claims 1 and 17. However, in a separate IPR, No.
IPR2014-00728 (“the ’728 IPR”), claims 1 and 17 were
held to be unpatentable, and that decision was affirmed
by our court during the pendency of this appeal. CF
CRESPE LLC v. Silicon Labs. Inc. (CRESPE I), 670 F.
App’x 707, 708 (Fed. Cir. 2016) (per curiam). Because the
Board did not address arguments concerning patentability
of the dependent claims separately from the nowunpatentable
independent claims, we vacate the decision
and remand to the Board, with instructions to consider
the patentability of the dependent claims 4, 6-9, and 21,
in light of our decision holding claims 1 and 17 unpatentable.

Since 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, we
set aside the decision as to the dependent claims and
remand for further consideration. In SKF USA Inc. v.
United States, 254 F.3d 1022, 1028 (Fed. Cir. 2001), we
pointed out that “remand is generally required if [an]
intervening event may affect the validity of the agency
action.” See also Ethyl Corp. v. Browner, 989 F.2d 522,
524 (D.C. Cir. 1993) (highlighting a “tradition of allowing
agencies to reconsider their actions where events pending
appeal draw their decision in question”); Nat’l Fuel Gas
Supply Corp. v. Fed. Energy Regulatory Comm’n, 899 F.2d
1244, 1249–50 (D.C. Cir. 1990) (per curiam) (granting
remand following new legal decision). Intervening events
can include “a new legal decision” such as the affirmation
of the previous IPRs by our court. SKF USA Inc., 254 F.3d
at 1028.

We note that the collateral-estoppel effect of an administrative
decision of unpatentability generally requires
the invalidation of related claims that present
identical issues of patentability. In Ohio Willow Wood Co.
v. Alps South, LLC, 735 F.3d 1333, 1342 (Fed. Cir. 2013),
we pointed out that “precedent does not limit collateral
estoppel to patent claims that are identical . . . . If the
differences between the unadjudicated patent claims and
adjudicated patent claims do not materially alter the
question of invalidity, collateral estoppel applies.” See also
Soverain, 778 F.3d at 1315; Bourns, Inc. v. United States,
537 F.2d 486, 493 (Ct. Cl. 1976) (per curiam).
On remand, the Board must consider whether the dependent
claims 4, 6-9, and 21 can survive the unpatentability
of claims 1 and 17 from which they depend in view
of the prior art cited in the ’728 IPR.3 The Board must
decide whether the remaining claims present materially
different issues that alter the question of patentability,
making them patentably distinct from claims 1 and 17


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