Please join us Monday, September 16, 2024, at noon where we will discuss two recent decisions made by the U.S. Court of Appeals for the Federal Circuit in Softview, LLC v. Apple Inc. et al., No. 2023-1005, 2023-1007 (Fed. Cir. July 26,  2024), and Voice Tech Corp., v. Unified Patents, LLC 2022-2163 (Fed Cir. August 1, 2024).

Softview, LLC v. Apple Inc. et al., No. 2023-1005, 2023-1007 (Fed. Cir. July 26, 2024)

In Softview, LLC v. Apple Inc. et al., No. 2023-1005, 2023-1007 (Fed. Cir. July 26, 2024), SoftView appealed a PTAB decision that invalidated all claims of its patent based on an estoppel provision 37 C.F.R. § 42.73(d)(3)(i), under which prohibits a patent owner from “obtaining in any patent: (i) A claim that is not patentably distinct from a finally refused or canceled claim.” following an inter partes review. Softview argued over the PTAB’s interpretation of estoppel regulation, their authority to issue the regulation and that the regulation did not apply to already issued claims.

The Federal Circuit upheld the regulation’s validity but limited its application to new or amended claims, not previously issued ones.

Voice Tech Corp., v. Unified Patents, LLC 2022-2163 (Fed Cir. August 1, 2024)

In Voice Tech Corp., v. Unified Patents, LLC 2022-2163 (Fed Cir. August 1, 2024), Voice Tech appealed the PTAB’s decision against Voice Tech following an inter partes review holding related claims as unpatentable. The Federal Circuit addressed two key issues regarding appeals from the PTAB: 1) forfeiture of arguments for failure to re-raise them on appeal; and 2) consideration of claim construction arguments on appeal.

The court held that failing to re-raise arguments in a PTAB rehearing request does not automatically forfeit those arguments on appeal to the Federal Circuit. This decision clarifies that parties need not redundantly present all arguments in rehearing requests to preserve them for appeal.

The court also held that to have claim construction arguments considered on appeal, appellants must demonstrate how a different construction would impact the PTAB’s ultimate conclusion. Merely asserting that a term needs definition is insufficient.

Jonathan Gutierrez, law clerk at SoCal IP, will lead the discussion.