Federal Circuit Clarifies Scope of Patent Owner Estoppel, PTAB Litigation Blog
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The Federal Circuit recently issued a decision in SoftView LLC v. Apple Inc. clarifying the scope of patent owner estoppel set forth in 37 C.F.R. § 42.73(d)(3)(i). 2024 WL 3543902 (Fed. Cir. July 26, 2024). The regulation prohibits a patent applicant or owner “from taking action inconsistent with [an] adverse judgment, including obtaining in any patent[] [a] claim that is not patentably distinct from a finally refused or canceled claim.” 37 C.F.R. § 42.73(d)(3)(i). The Federal Circuit upheld the validity of 37 C.F.R. § 42.73(d)(3)(i) under 35 U.S.C. § 316(a)(4) and the PTAB’s interpretation of the regulation. The Federal Circuit held that the estoppel regulation applies to new and amended claims, but not to previously issued claims. Softview LLC v. Apple Inc. (Fed. Cir. July 26, 2024).
