Softview LLC v. Apple Inc., Motorola Mobility LLC

United States Court of Appeals
for the Federal Circuit
______________________
SOFTVIEW LLC,
Appellant
v.
APPLE INC., MOTOROLA MOBILITY LLC,
Appellees
KATHERINE K. VIDAL, UNDER SECRETARY OF
COMMERCE FOR INTELLECTUAL PROPERTY
AND DIRECTOR OF THE UNITED STATES
PATENT AND TRADEMARK OFFICE,
Intervenor
______________________
2023-1005, 2023-1007
______________________
Appeals from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in Nos. 95/000,634,
95/002,132.
______________________
Decided: July 26, 2024
______________________
ALAN BURNETT , Law Office of R. Alan Burnett, Belle-
vue, WA, argued for appellant.
SONAL N ARESH M EHTA, Wilmer Cutler Pickering Hale
and Dorr LLP, Palo Alto, CA, argued for all appellees.
Motorola Mobility LLC also represented by MADELEINE C.
Case: 23-1005 Document: 73 Page: 1 Filed: 07/26/2024

-- 1 of 16 --

SOFTVIEW LLC v. APPLE INC. 2
L AUPHEIMER , Boston, MA; J OHN C. ALEMANNI, Kilpatrick
Townsend & Stockton LLP, Raleigh, NC; D AVID A. REED,
Atlanta, GA.
EDMUND HIRSCHFELD, Orrick, Herrington & Sutcliffe
LLP, New York, NY, for appellee Apple Inc. Also repre-
sented by MELANIE L. BOSTWICK, Washington, DC; MARK S.
D AVIES , White & Case LLP, Washington, DC; J AMES P.
MURPHY , Polsinelli PC, Houston, TX.
F ARHEENA YASMEEN R ASHEED, Office of the Solicitor,
United States Patent and Trademark Office, Alexandria,
VA, argued for intervenor. Also represented by P ETER J.
AYERS , MICHAEL S. F ORMAN.
______________________
Before L OURIE, BRYSON, and REYNA, Circuit Judges.
BRYSON, Circuit Judge.
Appellant SoftView LLC appeals from a decision of the
Patent Trial and Appeal Board in two inter partes reexam-
ination proceedings. Based on a prior decision in an inter
partes review (“IPR”) proceeding, the Board held all claims
of SoftView’s U.S. Patent No. 7,461,353 (“the ’353 patent”)
invalid under the estoppel provision set forth in 37 C.F.R.
§ 42.73(d)(3)(i).
SoftView challenges the Board’s application of section
42.73(d)(3)(i) on various grounds. First, SoftView contends
that the PTO improperly interpreted the regulation in a
manner that gave it broader scope than the common law
rule of collateral estoppel. Second, SoftView argues that
the Patent and Trademark Office (“PTO”) lacks statutory
authority to promulgate a regulation governing the estop-
pel effect of IPR decisions in subsequent proceedings before
the PTO. Third, SoftView maintains that the regulation by
its terms does not apply to claims that have already issued.
Case: 23-1005 Document: 73 Page: 2 Filed: 07/26/2024

-- 2 of 16 --

SOFTVIEW LLC v. APPLE INC. 3
We uphold the validity of the regulation and the estop-
pel standard adopted in the regulation. With respect to the
scope of the regulation, however, we agree with SoftView
that the regulation applies to new claims or amended
claims, but not to previously issued claims.
I
1. The Leahy-Smith America Invents Act (“AIA”), Pub.
L. No. 112–29, 125 Stat. 284 (2011), established the IPR
process and gave the PTO rulemaking authority to imple-
ment it. Specifically, Congress instructed the Director of
the PTO to prescribe regulations “governing inter partes
review . . . and the relationship of such review to other pro-
ceedings under this title.” 35 U.S.C. § 316(a)(4).
Pursuant to its authority under section 316(a)(4), the
PTO promulgated rules governing the procedures to be fol-
lowed in IPR proceedings. Among those rules was the rule
codified at 37 C.F.R. § 42.73(d)(3), which addressed the op-
eration of estoppel principles in patent office proceedings.
That rule prohibits a patent owner from “taking action
inconsistent with the adverse judgment” in various pro-
ceedings, including IPR proceedings. As the PTO ex-
plained when the regulation was issued, section 42.73(d)(3)
applies to judgments in “derivation proceedings, inter
partes review, post-grant review, and covered business
method review.” Rules of Practice for Trials Before the Pa-
tent Trial and Appeal Board and Judicial Review of Patent
Trial and Appeal Board Decisions (“Rules of Practice II”),
77 Fed. Reg. 48612, 48649 (Aug. 14, 2012). In particular,
the regulation prohibits a patent owner from “obtaining in
any patent: (i) A claim that is not patentably distinct from
a finally refused or canceled claim.”
2. The ’353 patent is directed to displaying internet
content on mobile devices. Various phone manufacturers
have challenged the validity of the ’353 patent in proceed-
ings before the PTO. In 2011, Apple filed a request for inter
Case: 23-1005 Document: 73 Page: 3 Filed: 07/26/2024

-- 3 of 16 --

SOFTVIEW LLC v. APPLE INC. 4
partes reexamination of the ’353 patent. Proceeding No.
95/000,634. Over the next two years, Apple filed a separate
request for ex parte reexamination of the ’353 patent, pro-
ceeding No. 90/009,994, and Motorola also filed a request
for inter partes reexamination of the ’353 patent, proceed-
ing No. 95/002,132. On October 12, 2012, Kyocera filed a
petition for inter partes review of 18 of the 319 claims of the
’353 patent, proceeding No. IPR2013-00007. The Board
stayed all of the reexamination proceedings pending the
outcome of the IPR proceeding.
On March 27, 2014, the Board issued a final written
decision in the IPR proceeding, finding each of the 18 chal-
lenged claims of the ’353 patent unpatentable. This court
summarily affirmed. SoftView LLC v. Kyocera Corp., 592
F. App’x 947 (Fed. Cir. 2015). The IPR certificate issued on
January 12, 2016, canceling the challenged claims.
3. The stay of the ex parte and inter partes reexamina-
tion proceedings challenging the remaining claims of the
’353 patent was lifted on November 27, 2015. In ex parte
reexamination No. 90/009,994, SoftView amended various
claims of the patent, which were then deemed patentable
over the prior art. There are 107 such amended claims.1
To the extent they differ more than trivially from the
canceled claims, the amended claims merely combine limi-
tations from multiple canceled claims. For example, origi-
nal claims 1, 118, and 138 (which depends from claim 118)
1 The amended claims are claims 5, 23–27, 60–61,
122, 137, 140–41, 147, 156, 174–77, 238–42, 248, 259, and
274–77, as well as the claims that depend from those di-
rectly amended, which are claims 9, 12–14, 16–17, 19–21,
71–83, 85, 86, 88–111, 126, 129, 130, 132, 134, 135, 162–
64, 166–67, 215, 226–36, 245–47, 251, 265, 266, 268, and
270–71. This list includes some claims that are not on ap-
peal.
Case: 23-1005 Document: 73 Page: 4 Filed: 07/26/2024

-- 4 of 16 --

SOFTVIEW LLC v. APPLE INC. 5
were all found invalid in the IPR. Amended claim 5 com-
bines the device of claim 1 together with the method of
claim 118/138, with only immaterial differences in phras-
ing. Compare ’353 patent, Ex Parte Reexamination Certif-
icate at col. 1, line 31, to col. 2, line 10 (amended claim 5)
with ’353 patent at col. 22, ll.15–43 (canceled claim 1) and
id. at col. 34, ll. 6–19 (canceled claim 138).
In the inter partes reexaminations, the examiner found
the overwhelming majority of claims unpatentable over the
prior art under 35 U.S.C. § 103. On appeal, the Board re-
versed the examiner’s obviousness rejections on the ground
that there was “insufficient articulated reasoning to sup-
port the Examiner’s final conclusion that the claims would
have been obvious to one of ordinary skill in the art at the
time of Appellant’s invention.” J.A. 69. The Board, how-
ever, entered a new ground of rejection as to all pending
claims based on 37 C.F.R. § 42.73(d)(3)(i). The Board ap-
plied that regulation both to the “amended claims” and to
the claims that had already issued.
Going claim by claim, the Board found that each claim
was either essentially the same as a canceled claim or
merely a combination of limitations that had previously
been invalidated on obviousness grounds in the IPR.
Where the Board found the latter, it reasoned that the lim-
itations in combination “merely perform as they did in each
sub-combination.” See, e.g., J.A. 90. For that reason, the
Board held that the claims were not “patentably distinct”
from those that had been invalidated in the IPR proceeding
and were therefore invalid under section 42.73(d)(3)(i) of
the PTO’s regulations.
II
SoftView first challenges the Board’s interpretation of
the term “patentably distinct” that is used in section
42.73(d)(3)(i). SoftView contends that the regulation was
intended to codify the common law doctrine of collateral es-
toppel and that the Board improperly interpreted the
Case: 23-1005 Document: 73 Page: 5 Filed: 07/26/2024

-- 5 of 16 --

SOFTVIEW LLC v. APPLE INC. 6
regulation as giving broader preclusive effect to the deci-
sion in the IPR proceeding involving the ’353 patent claims
than would have been the case if the Board had applied
common law collateral estoppel principles.
The Board gave the term “patentably distinct” in sec-
tion 42.73(d)(3)(i) the same meaning as that term is given
in obviousness-type double patenting cases and in interfer-
ence proceedings. See, e.g., Takeda Pharm. Co. v. Doll, 561
F.3d 1372, 1375 (Fed. Cir. 2009) (addressing whether
claims are “patentably distinct” for purposes of double pa-
tenting rejection); In re Deckler, 977 F.2d 1449, 1452 (Fed.
Cir. 1992) (precluding an applicant from obtaining “claims
for inventions that are patentably indistinct from those in
an interference that the applicant had lost”). Applying the
same definition of the term “patentably distinct,” the Board
interpreted section 42.73(d)(3)(i) to prohibit a patent owner
from obtaining a claim that would be anticipated by, or ob-
vious in light of, a previously canceled claim. See J.A. 17,
77 (citing Eli Lilly & Co. v. Barr Lab’ys, Inc., 251 F.3d 955,
968 (Fed. Cir. 2001)).
Because the term “patentably distinct” has a special-
ized meaning in patent law, it can be presumed that the
PTO intended to adopt that meaning when it promulgated
the regulation. Identical words used in a given field of law
typically carry the same meaning. See Henson v. Santan-
der Consumer USA Inc., 582 U.S. 79, 85 (2017). Thus, ab-
sent strong evidence to the contrary, the PTO’s use of the
term “patentably distinct” in section 42.73(d)(3)(i) should
be read to invoke the term’s established meaning in the
double patenting and interference contexts. That is partic-
ularly so because the term “patentably distinct” serves a
similar purpose in all three settings: to prohibit a patentee
from exploiting patent claims that are not materially dis-
tinguishable from claims that have either expired or been
invalidated in prior proceedings.
Case: 23-1005 Document: 73 Page: 6 Filed: 07/26/2024

-- 6 of 16 --

SOFTVIEW LLC v. APPLE INC. 7
In its first argument to the contrary, SoftView contends
that the term “not patentably distinct” in section
42.73(d)(3)(i) should be interpreted to mean “substantially
the same.” SoftView argues that the requirement that a
claim be “substantially the same” as the previously can-
celed claim was meant to adopt the principles of common
law collateral estoppel.
In support of that argument, SoftView points out that
the initially proposed version of section 42.73(d)(3)(i) pro-
vided that estoppel based on a prior adverse ruling in an
IPR proceeding would apply to “[a] claim to substantially
the same invention as the finally refused or cancelled
claim.” Rules of Practice for Trials Before the Patent Trial
and Appeal Board and Judicial Review of Patent Trial and
Appeal Board Decisions (“Rules of Practice I”), 77 Fed. Reg.
6879, 6913 (Feb. 9, 2012). In the final version of the regu-
lation, the PTO revised that language to read “[a] claim
that is not ‘patentably distinct’ from a finally refused or
canceled claim.” Although the PTO did not explain why it
made the change from the initially proposed version of the
regulation, it appears likely that the change was made for
clarification, as the term “not patentably distinct” has a
precise meaning in patent law, whereas “substantially the
same” does not.
There is also support outside the context of section
42.73(d)(3) for the argument that “not patentably distinct”
means “substantially the same.” See SimpleAir, Inc. v.
Google LLC, 884 F.3d 1160, 1167 (Fed. Cir. 2018) (holding,
in the context of claim preclusion, that “claims which are
patentably indistinct are essentially the same”). In fact,
elsewhere in the PTO’s regulations, the term “substantially
the same” is defined to mean “patentably indistinct.” 37
C.F.R. § 42.401.
While SoftView is correct that the terms “not patenta-
bly distinct” and “substantially the same” are equivalent,
that does not advance SoftView’s argument that the Board
Case: 23-1005 Document: 73 Page: 7 Filed: 07/26/2024

-- 7 of 16 --

SOFTVIEW LLC v. APPLE INC. 8
misapplied section 42.73(d)(3)(i). The Board found that the
regulation barred SoftView from obtaining claims that
were not patentably distinct from those canceled in the IPR
proceeding; the Board plainly would have reached the same
conclusion if it had used the “substantially the same” test
for which SoftView has advocated, as that test is defined to
invoke the “not patentably distinct” standard.
SoftView’s second argument is that section
42.73(d)(3)(i) should be construed as adopting common law
principles of collateral estoppel. SoftView bases that argu-
ment principally on a response by the PTO to comments on
the proposed version of section 42.73(d)(3) during the
promulgation process. In response to a complaint that the
proposed rule was at odds with various legal doctrines, the
PTO stated that the regulation was “consistent with the
AIA, other statutory provisions, the common law related to
estoppel, and the common law related to the recapture
rule.” Rules of Practice II, 77 Fed. Reg. at 48649.
SoftView’s position is unpersuasive. The Board’s anal-
ysis, which involved comparing the claims before it with
the previously canceled claims, paralleled the analysis un-
der common law collateral estoppel, which would have in-
volved comparing the claims before the Board with the
prior art. In holding that the claims before it were not ma-
terially different from the canceled claims in any way that
would affect patentability, the Board’s approach merely
considered whether the resolution of an issue in a previous
case bars the relitigation of that issue in a subsequent case.
That is the same question addressed under the common
law rule. See Regents of the University of Minnesota v. LSI
Corp., 926 F.3d 1327, 1345–46 n.5 (Fed. Cir. 2019) (“To the
extent the estoppel provisions in 37 C.F.R. § 42.73(d)(3)
prevent a patent owner from obtaining a patent on claims
that are patentably indistinct from cancelled claims in an
IPR proceeding, that result is no different than what is
mandated under traditional principles of res judicata and
collateral estoppel.”).
Case: 23-1005 Document: 73 Page: 8 Filed: 07/26/2024

-- 8 of 16 --

SOFTVIEW LLC v. APPLE INC. 9
SoftView’s core complaint is that the Board applied es-
toppel based on the IPR decision canceling claims from the
’353 patent rather than comparing the claims before it to
the prior art. As to that issue, however, the plain text of
the regulation unambiguously supports the Board’s action.
Section 42.73(d)(3)(i) goes beyond the common law rule by
calling for a comparison between the claims an applicant is
“obtaining” and the “finally refused or canceled claim.”
Whether the Board’s action was lawful thus depends on
whether the PTO had statutory authority to issue the reg-
ulation, an issue that we address below.
III
Because section 42.73(d)(3) renders unpatentable a
category of claims that would not necessarily be unpatent-
able on obviousness grounds over the prior art, SoftView
argues that the PTO lacked authority to promulgate it.
Under the legal framework in place absent the regulation,
claims are judged for obviousness over the prior art—not
over previously canceled claims, as allowed by the regula-
tion. SoftView contends that the PTO has statutory au-
thority to issue regulations on procedural matters, but not
on substantive issues of patent law, such as the estoppel
effect of PTO decisions. The appellees and the intervenor,
however, point to 35 U.S.C. § 316(a)(4), which authorizes
the Director to prescribe regulations “establishing and gov-
erning inter partes review under this chapter and the rela-
tionship of such review to other proceedings under this
title.” We reject SoftView’s argument and hold that section
42.73(d)(3) of the PTO’s regulations was lawfully promul-
gated pursuant to the agency’s rulemaking authority under
section 316(a)(4) of the Patent Act.
This court has held that 35 U.S.C. § 2(b)(2)(A), which
authorizes the PTO to issue regulations that “govern the
conduct of proceedings in the Office,” does not authorize the
PTO to issue “substantive” rules. See Cooper Techs. Co. v.
Dudas, 536 F.3d 1330, 1335–36 (Fed. Cir. 2008). But
Case: 23-1005 Document: 73 Page: 9 Filed: 07/26/2024

-- 9 of 16 --

SOFTVIEW LLC v. APPLE INC. 10
section 316(a)(4) refers broadly to regulations “governing
inter partes review and the relationship of such review to
other proceedings” before the PTO, and it provides a sepa-
rate source of rulemaking authority for the PTO to issue
such regulations.2
Thus, contrary to SoftView’s contention, section
316(a)(4) is not limited to authorizing the PTO to issue pro-
cedural rules. The Supreme Court made that point explic-
itly in Cuozzo Speed Techs., LLC v. Lee, 579 U.S. 261
(2016), in which the Court distinguished section 316(a)(4)
from section 2(b)(2)(A), which this court had interpreted as
being “limited to procedural rules.”3 Id. at 277. The Court
held the caselaw interpreting section 2(b) inapplicable be-
cause section 316(a)(4) is not limited to “proceedings,” and
2 To be sure, the PTO’s authority under Section
316(a)(4) is not unbounded. See Ernst & Ernst v. Hoch-
felder, 425 U.S. 185, 213–14 (1976). Section 316(a)(4) does
not grant the PTO the authority to legislate new patent
laws, but rather charges it with prescribing regulations
governing IPR proceedings. See Oral Arg. 26:00–50 (appel-
lee conceding that the PTO does not have “unfettered” au-
thority under section 316(a)(4)). We do not define the exact
limits of this statutory provision today but narrowly deter-
mine that it authorized the PTO to promulgate section
42.73(d)(3)(i). The task of defining the bounds of section
316(a)(4) is for a later date and to be decided on a record
with briefing more dedicated to that issue and in consider-
ation of the Supreme Court’s recent ruling in Loper Bright
Enters. v. Raimondo, Nos. 22-451, 22-1219, (U.S. June 28,
2024).
3 The Court questioned whether section 2(b)(2)(A) it-
self should be limited to procedural rules, noting that the
statute “does not clearly contain the Circuit’s claimed lim-
itation.” Cuozzo, 579 U.S. at 277.
Case: 23-1005 Document: 73 Page: 10 Filed: 07/26/2024

-- 10 of 16 --

SOFTVIEW LLC v. APPLE INC. 11
instead applies “broadly to regulations ‘establishing and
governing inter partes review.’” Id.
Section 42.73(d)(3), which prohibits “taking action in-
consistent with [an] adverse judgment,” is clearly directed
to “governing inter partes review” and the “relationship of
such review to other proceedings” before the PTO. As the
PTO explained when it adopted the set of regulations to
which section 42.73(d)(3) belongs, one of the purposes of
those regulations is to “ensure the integrity of the trial pro-
cedures.” Rules of Practice II, 77 Fed. Reg. at 48612. Pre-
venting a patent owner or applicant from acting
inconsistently with the outcome of an IPR proceeding en-
sures that the decisions in those proceedings have practical
effect. Preventing such inconsistent action is therefore
closely tied to the statutory grant of authority to issue reg-
ulations “governing inter partes review.”
Section 42.73(d)(3)(i) provides a specific example of
such an inconsistent action. It would be inconsistent with
the decision in an IPR if, for example, a patent owner ob-
tained claims not patentably distinct from those canceled
in the IPR by way of a continuation or reissue application.
Section 42.73(d)(3)(i) thereby serves the same purpose as
the more general provision in section 42.73(d)(3): ensuring
the integrity of the proceedings before the PTO by prevent-
ing actions that would undermine the outcomes of those
proceedings. As such, the estoppel provision in section
42.73(d)(3)(i) falls within the rulemaking authority
granted to the PTO in section 316(a)(4) of the Patent Act.
IV
Although we agree that the PTO was authorized to
promulgate section 42.73(d)(3)(i), we disagree with the
Board’s application of that regulation to previously issued
claims. By its terms, the regulation applies to “obtaining”
a claim—not maintaining an existing claim. For that rea-
son, we vacate the Board’s decision as to the “issued claims”
Case: 23-1005 Document: 73 Page: 11 Filed: 07/26/2024

-- 11 of 16 --

SOFTVIEW LLC v. APPLE INC. 12
on appeal but affirm its application of the regulation to the
“amended claims.”4
A
Two other panels of the Board have previously held
that section 42.73(d)(3)(i) does not apply to issued claims.
In Apple Inc. v. Contentguard Holdings, Inc., the Board ex-
plained that
comments accompanying the rule suggest that it is in-
tended to preclude recapturing in another USPTO pro-
ceeding—e.g., prosecuting a continuing or reissue
application—subject matter that was lost in an AIA
proceeding. Thus, this rule does not preclude Patent
Owner from defending the patentability of the chal-
lenged claims.
IPR2015-00458, at *8 (P.T.A.B Jul. 15, 2015) (internal ci-
tation omitted); see also Gen. Elec. Co. v. United Techs.
Corp., IPR2017-00428, at *8 (P.T.A.B Jun. 22, 2018).
The Board in the present case found the decisions in
Apple v. Contentguard and General Electric v. United Tech-
nologies distinguishable because those decisions were in
IPR cases, whereas the present case concerns an inter
partes reexamination. Unlike IPR proceedings, the Board
reasoned, inter partes reexaminations are “examination-
like” proceedings, warranting the application of a different
4 SoftView’s notices of appeal recite fewer than all
rejected claims. The issued claims on appeal are those that
are both listed in SoftView’s notices of appeal and do not
belong to the “amended claims.” The issued claims on ap-
peal include claims 3, 6, 11, 18, 30–32, 35, 37–38, 41, 50,
53, 55, 69–70, 75, 87, 111, 128, 131, 133–34, 144–45, 147,
150–51, 154, 161, 165, 168–69, 171, 182, 184–87, 189–94,
196, 199, 203–04, 206–07, 209, 216, 253–54, 264, 267, 269,
282, 285–88, 290–94, 296, 303, 304–07, 310, and 318–22.
Case: 23-1005 Document: 73 Page: 12 Filed: 07/26/2024

-- 12 of 16 --

SOFTVIEW LLC v. APPLE INC. 13
estoppel standard. J.A. 76; but see Cuozzo, 579 U.S. at 279
(“Although Congress changed the name from ‘reexamina-
tion’ to ‘review,’ nothing convinces us that, in doing so, Con-
gress wanted to change its basic purposes, namely, to
reexamine an earlier agency decision.”).5
We agree with the Board’s conclusions in Apple v. Con-
tentguard and General Electric v. United Technologies, and
we hold that the reasoning in those cases applies to both
IPRs and inter partes reexaminations. For purposes of sec-
tion 42.73(d)(3)(i), we see no meaningful distinction be-
tween maintaining a non-distinct claim in an IPR
proceeding and maintaining such a claim in an inter partes
5 In support of that distinction, the Board in this case
cited Ex parte Nelson, 2020 WL 8186425 (P.T.A.B. Dec. 31,
2020), in which the patent owner argued, in an inter partes
reexamination, that “obtaining” did not include maintain-
ing claims. But the Board in Nelson did not address that
argument. Instead, the Board rejected the patent owner’s
position because the provision in section 42.73(d)(3) that
prohibits a patent owner from taking “action inconsistent
with the adverse judgment” separately estopped the patent
owner from arguing issues decided in the earlier IPR. Nel-
son ultimately held that estoppel applied, “but only to the
extent that Appellant’s arguments [were] inconsistent with
the prior adverse judgment.” 2020 WL 8186425, at *7; see
also id. at *5 (“Appellant’s narrow focus on the single ex-
ample provided in sub-section (i) ignores the broader lan-
guage in § 42.73(d)(3),” which “is not limited to . . .
obtaining a claim that is not patentably distinct from a fi-
nally canceled claim.” (cleaned up)). The Board in Nelson
did not hold, as the Board panel in this case believed, that
section 42.73(d)(3)(i) has the effect of prohibiting a patent
owner from maintaining non-distinct claims in inter partes
reexamination proceedings.
Case: 23-1005 Document: 73 Page: 13 Filed: 07/26/2024

-- 13 of 16 --

SOFTVIEW LLC v. APPLE INC. 14
reexamination, and we note that the regulation does not
draw any such distinction.
Drawing a distinction between obtaining a new claim
and maintaining a previously issued claim makes sense. It
is reasonable to characterize “obtaining” a new claim that
is not patentably distinct from a finally refused or canceled
claim” as an “action inconsistent with the adverse judg-
ment” under 37 C.F.R. § 42.73(d)(3), because such an ac-
tion can fairly be viewed as an effort to circumvent the
prior adverse judgment. By contrast, seeking to maintain
an already issued claim cannot be viewed as circumventing
a subsequent decision on related claims. We therefore con-
clude that, as the plain language of the rule suggests, the
PTO elected not to include the latter class of claims within
the scope of the estoppel rule in section 42.73(d)(3)(i). Ac-
cordingly, we vacate the Board’s decision as to the issued
claims that the Board invalidated based on estoppel.
B
SoftView does not challenge the Board’s holding that
claims amended during an ex parte reexamination are “ob-
tained” for purposes of section 42.73(d)(3)(i). Instead,
SoftView argues that the amended claims at issue are pa-
tentably distinct from the claims canceled in the IPR pro-
ceeding. Specifically, SoftView challenges the Board’s
general methodology of considering whether two obvious
limitations, when combined, perform differently such that
their combination renders the resulting claim nonobvious.
SoftView further argues that errors in claim construction
infected the Board’s analysis of various claims. We affirm
the Board’s conclusions on these issues.
The question whether claims are patentably distinct fo-
cuses on “the differences in subject matter between the
claims.” Amgen Inc. v. F. Hoffman-La Roche Ltd, 580 F.3d
1340, 1361 (Fed. Cir. 2009). That step “is analogous to an
obviousness analysis under 35 U.S.C. § 103.” Eli Lilly &
Co. v. Teva Parenteral Medicines, Inc., 689 F.3d 1368, 1377
Case: 23-1005 Document: 73 Page: 14 Filed: 07/26/2024

-- 14 of 16 --

SOFTVIEW LLC v. APPLE INC. 15
(Fed. Cir. 2012). In general, the combination of known el-
ements may be nonobvious if the invention as a whole “is
more than the predictable use of prior art elements accord-
ing to their established functions.” KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 417 (2007). The Board’s “patentably dis-
tinct” analysis merely applied KSR’s instruction to the can-
celed claims rather than to prior art references. The Board
evaluated whether the combination of the canceled claim
limitations—all of which are individually in the prior art—
made them anything more than the obvious sum of their
parts. The Board concluded that it did not.
There are 107 amended claims at issue in this case.
SoftView does not raise specific arguments with respect to
whether particular amended claims are patentably distinct
from the canceled claims. Our review is therefore limited
to the Board’s general methodology, which we uphold. We
do not address whether that methodology was correctly ap-
plied to specific claims. We also do not address whether
the various claim constructions SoftView challenges were
improper. Even if we were to agree with SoftView’s posi-
tions, SoftView’s failure to tie its claim construction argu-
ments to specific claims prevents us from determining
whether the Board’s constructions “could impact the con-
clusion.” See State Contracting & Eng’g Corp. v. Condotte
Am., Inc., 346 F.3d 1057, 1068 (Fed. Cir. 2003). We there-
fore affirm the application of section 42.73(d)(3)(i) to the
amended claims.
V
We have considered SoftView’s remaining arguments
and find them unpersuasive. For the reasons stated, we
affirm the Board’s application of section 42.73(d)(3)(i) to
the amended claims, but we vacate and remand for further
consideration of the application of the regulation to issued
claims 3, 6, 11, 18, 30–32, 35, 37–38, 41, 50, 53, 55, 69–70,
75, 87, 111, 128, 131, 133–34, 144–45, 147, 150–51, 154,
161, 165, 168–69, 171, 182, 184–87, 189–94, 196, 199, 203–
Case: 23-1005 Document: 73 Page: 15 Filed: 07/26/2024

-- 15 of 16 --

SOFTVIEW LLC v. APPLE INC. 16
04, 206–07, 209, 216, 253–54, 264, 267, 269, 282, 285–88,
290–94, 296, 303, 304–07, 310, and 318–22.
AFFIRMED-IN-PART AND VACATED AND
REMANDED-IN-PART
COSTS
No costs.
Case: 23-1005 Document: 73 Page: 16 Filed: 07/26/2024

-- 16 of 16 --