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 NARESH MEHTA, 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: 2 Filed: 07/26/2024

2 SOFTVIEW LLC v. APPLE INC.

LAUPHEIMER, Boston, MA; JOHN C. ALEMANNI, Kilpatrick Townsend & Stockton LLP, Raleigh, NC; DAVID 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. DAVIES, White & Case LLP, Washington, DC; JAMES P. MURPHY, Polsinelli PC, Houston, TX.

FARHEENA YASMEEN RASHEED, Office of the Solicitor, United States Patent and Trademark Office, Alexandria, VA, argued for intervenor. Also represented by PETER J. AYERS, MICHAEL S. FORMAN. ______________________

Before LOURIE, 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: 3 Filed: 07/26/2024

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 of