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The Preclusive Effect of Related PTAB Decisions

In MaxLinear, Inc. v. CF Crespe LLC, the Federal Circuit recently confirmed that issue preclusion applies to administrative agency decisions, including those from the Patent Trial and Appeal Board (“PTAB”) in IPR proceedings.  In MaxLinear, Inc., the Federal Circuit was presented with the appeal of a PTAB decision upholding the patentability of the challenged claims, including claims that were recently found to be unpatentable in related IPR proceedings.  In the instant IPR (i.e., IPR2015-00592), MaxLinear, Inc. unsuccessfully challenged claims 1-4, 6-9, and 16-21 of CF Crespse LLC’s U.S. Patent No. 7,075,585 (“the ’585 patent”).  In its final written decision, the PTAB analyzed only the two independent claims—claims 1 and 17—and held that since the remaining claims depended from one of these two claims, they were also patentable over the relevant prior art.

The ’585 patent was not new to the Federal Circuit, as it had recently affirmed two PTAB decisions involving the very same patent.  Namely, the Federal Circuit affirmed PTAB decisions in IPR2014-00728 and IPR2015-00615 finding that claims 1, 17, and 20 of the ’585 patent were unpatentable.  Even though IPR2014-00728 and IPR2015-00615 involved different prior art references than the art at issue in IPR2015-00592, the Federal Circuit needed to assess what impact, if any, those prior IPR decisions would have on the instant appeal.

The Federal Circuit concluded that collateral estoppel or issue preclusion compelled a determination that claims 1, 17, and 20 in the present case were unpatentable.  Relying on Supreme Court precedent, the Federal Circuit concluded that “[i]t is well established that collateral estoppel, also known as issue preclusion, applies in the administrative context.”  Decision at 5 (citing B&B Hardware, Inc. v. Hargis Indus., Inc., 135 S. Ct. 1293, 1303 (2015)).  The Federal Circuit held that collateral estoppel applied even though the related IPR proceedings did not become final until the present proceeding was on appeal.  Since the PTAB’s decision in the instant IPR proceeding was premised on the fact that claims 1 and 17 of the ’585 patent were patentable, the Federal Circuit set aside the PTAB’s final written decision.  Further, the case was remanded to the PTAB for further consideration of the patentability of the dependent claims at issue.

On remand, the PTAB will need to determine whether or not the subject matter of the dependent claims materially distinguishes those dependent claims from the unpatentable independent claims.  As guidance for the PTAB on remand, the Federal Circuit pointed to its prior decision, Ohio Willow Wood Co. v. Alps South, LLC, 735 F.3d 1333, 1342 (Fed. Cir. 2013), holding 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.”   Pursuant to the recent PTAB guidance on remand procedures, we expect the PTAB to issue a new decision within six months of the Federal Circuit mandate.