Federal Circuit Summaries

Before Dyk, Schall, and Reyna. Appeal from the Patent Trial and Appeal Board.

Summary: Final written decisions by an administrative tribunal invalidating a patent can have a preclusive effect.

MaxLinear filed an IPR petition on claims of a CF Crespe patent. The Board instituted review on the independent claims and certain dependent claims and ultimately issued a final written decision upholding the patentability of the challenged claims. However, the Board limited its analysis to the independent claims and did not separately analyze the dependent claims. MaxLinear appealed the Board’s decision of patentability.

Pending the appeal, the Board issued final written decisions for two other IPR proceedings concerning the same CF Crespe patent, but considering different prior art. In these proceedings, which were subsequently affirmed by the Federal Circuit, the Board held that certain claims of the CF Crespe patent were unpatentable including the independent claims that were held patentable in the IPR proceeding that was the subject of this appeal.

The parties agreed that the prior decisions in the other two IPR proceedings and that were upheld by the Federal Circuit had a preclusive effect in this proceeding. The Federal Circuit noted that in light of the B&B Hardware, Inc. v. Hargis Indus., Inc. decision the parties could hardly argue otherwise. Issue preclusion prevents a party from re-litigating an issue and applies in the administrative context. Accordingly, the Federal Circuit held that the decisions in the two other IPR proceedings finally resolved the issue of unpatentability of the independent claims. However, because the Board failed to separately analyze the dependent claims, the Federal Circuit remanded to the Board with instructions to consider the patentability of the dependent claims.