Maxlinear, Inc. v. Cf Crespe LLC
880 F.3d 1373
Fed. Cir.2018Background
- The PTAB in IPR2015-00592 (the ’592 IPR) instituted review of claims 1–4, 6–9, and 16–21 of U.S. Patent No. 7,075,585 and upheld those claims based solely on analysis of independent claims 1 and 17.
- MaxLinear appealed the PTAB’s final decision as to dependent claims 4, 6–9, and 20–21.
- Separately, in IPR2015-00728 (the ’728 IPR) and IPR2015-00615 (the ’615 IPR), the PTAB found claims 1, 17, and 20 unpatentable; those findings were affirmed on appeal, rendering claims 1, 17, and 20 finally unpatentable.
- The PTAB in the ’592 IPR did not perform an independent analysis of the dependent claims, instead concluding they survived only because the independent claims were found patentable.
- The Federal Circuit concluded collateral estoppel applies to the earlier affirmed IPR decisions, which removes the PTAB’s basis for upholding the dependent claims in the ’592 IPR.
- The court vacated the PTAB’s decision as to dependent claims 4, 6–9, and 21 and remanded for the Board to evaluate those claims independently in light of the now-unpatentable independent claims.
Issues
| Issue | MaxLinear's Argument | CRESPE's Argument | Held |
|---|---|---|---|
| Effect of earlier IPR final judgments on this IPR | Earlier PTAB affirmances of unpatentability preclude PTAB from finding independent claims patentable here | Prior IPRs involve different proceedings; this IPR may be analyzed independently | Collateral estoppel applies; earlier affirmed unpatentability controls for claims 1 and 17 (and claim 20), removing the PTAB’s basis in the ’592 IPR |
| Whether dependent claims survive despite unpatentable independents | Dependent claims should be invalid if they present the same patentability issues as the independent claims | Dependent claims may have limitations making them patentably distinct | Remand required for PTAB to determine whether dependent claims present materially different issues and thus survive |
| Adequacy of PTAB analysis of dependent claims | PTAB’s reliance solely on independent-claim analysis is insufficient | PTAB acted properly by incorporating independent-claim reasoning | Court held PTAB’s analysis was inadequate because it never separately addressed dependent claims; vacated and remanded |
| Waiver of arguments for certain dependent claims | MaxLinear not party to other IPRs not dispositive | CRESPE may have waived separate defenses for some dependent claims | Court allowed PTAB on remand to consider waiver arguments for claims 4, 8, and 9 |
Key Cases Cited
- B & B Hardware, Inc. v. Hargis Indus., Inc., 135 S. Ct. 1293 (2015) (administrative decisions can give rise to issue preclusion)
- Astoria Fed. Sav. & Loan Ass’n v. Solimino, 501 U.S. 104 (1991) (issue preclusion can apply between courts and agencies)
- Mycogen Plant Sci., Inc. v. Monsanto Co., 252 F.3d 1306 (Fed. Cir.) (judgment of invalidity precludes relitigation of same issues)
- Blonder-Tongue Labs., Inc. v. Univ. of Illinois Found., 402 U.S. 313 (1971) (preclusive effect of invalidity judgments)
- SKF USA Inc. v. United States, 254 F.3d 1022 (Fed. Cir.) (remand appropriate when intervening events may affect agency action)
- Ohio Willow Wood Co. v. Alps South, LLC, 735 F.3d 1333 (Fed. Cir.) (collateral estoppel applies where differences do not materially alter invalidity question)
- Soverain Software LLC v. Victoria’s Secret Direct Brand Mgmt., LLC, 778 F.3d 1311 (Fed. Cir.) (issue preclusion applies even if precluding judgment arises while case is on appeal)
- SkyHawke Techs., LLC v. Deca Int’l Corp., 828 F.3d 1373 (Fed. Cir.) (administrative PTO decisions can ground issue preclusion)