Maxlinear, Inc. v. Cf Crespe LLC

United States Court of Appeals
for the Federal Circuit
______________________
MAXLINEAR, INC.,
Appellant
v.
CF CRESPE LLC,
Appellee
______________________
2017-1039
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2015-
00592.
______________________
Decided: January 25, 2018
______________________
GREGORY SCHODDE, McAndrews, Held & Malloy, Ltd.,
Chicago, IL, argued for appellant. Also represented by
RONALD SPUHLER.
CRAIG ROBERT SMITH, Lando & Anastasi, LLP, Cam-
bridge, MA, argued for appellee. Also represented by
ERIC P. CARNEVALE.
______________________
Before DYK, SCHALL, and REYNA, Circuit Judges.
DYK, Circuit Judge.
2 MAXLINEAR, INC. v. CF CRESPE LLC
Appellant MaxLinear, Inc. (“MaxLinear”) appeals
from the final written decision of the Patent Trial and
Appeal Board (“Board”) in an inter partes review (“IPR”).
The Board upheld the patentability of claims 1-4, 6-9, and
16-21 of U.S. Patent No. 7,075,585 (“the ’585 patent”)
owned by appellee CF CRESPE LLC (“CRESPE”).
MaxLinear seeks review of the Board’s decision with
respect to dependent claims 4, 6-9, and 20-21.
The Board based its decision on an analysis of inde-
pendent claims 1 and 17. However, in a separate IPR, No.
IPR2014-00728 (“the ’728 IPR”), claims 1 and 17 were
held to be unpatentable, and that decision was affirmed
by our court during the pendency of this appeal. CF
CRESPE LLC v. Silicon Labs. Inc. (CRESPE I), 670 F.
App’x 707, 708 (Fed. Cir. 2016) (per curiam). Because the
Board did not address arguments concerning patentabil-
ity of the dependent claims separately from the now-
unpatentable independent claims, we vacate the decision
and remand to the Board, with instructions to consider
the patentability of the dependent claims 4, 6-9, and 21,
in light of our decision holding claims 1 and 17 unpatent-
able.
BACKGROUND
The ’585 patent “relates to a broadband television sig-
nal receiver for receiving multi-standard analog television
signals, digital television signals and data channels.” ’585
patent, col. 1 ll. 15-19. A television receiver converts a
radio frequency (“RF”) signal from the broadcast frequen-
cy, filters out interfering signals, and then demodulates or
decodes the signal of interest. In layman’s terms, the
television signal receiver takes incoming television broad-
cast signals and processes the signal into a viewable
medium for eventual display.
This appeal concerns the final written decision of the
Board issued on August 11, 2016. This proceeding com-
menced on January 28, 2015, when MaxLinear petitioned
MAXLINEAR, INC. v. CF CRESPE LLC 3
for an inter partes review of claims 1-21 of the ’585 pa-
tent. The Board instituted review of claims 1-4, 6-9, and
16-21 based on the prior art combination of Van De
Plassche (“VDP”) with Ishikawa and other references.
MaxLinear, Inc., v. Cresta Tech. Corp., No. IPR2015-
00592, 2016 WL 8946032, at *1 (P.T.A.B. Aug. 11, 2016)
(the “’592 IPR”). 1 In the final written decision, the Board
held that the challenged claims were not shown to be
unpatentable over the prior art. Id. at *12.
Claims 1 and 17 are the only independent claims in
the patent, with claim 1 conveying the television receiver
and claim 17 being the associated method claim. The
Board limited its analysis to the independent claims and
did not separately analyze the dependent claims. The
Board declined to find claims 1 and 17 unpatentable over
a combination of VDP and Ishikawa. Id. at *12.
The Board based its finding of nonobviousness entire-
ly on the analysis of claims 1 and 17. The Board held that
“[p]etitioner has not shown . . . independent claims 1 and
17 are unpatentable. Because each of challenged depend-
ent claims 2-4, 6-9, 16, and 18-21 incorporate the limita-
tions of the respective independent claims, we also
conclude that [p]etitioner has not shown, by a preponder-
ance of the evidence, that those claims are unpatentable.”
Id. at *12. The Board never mentioned any separate
arguments concerning the dependent claims’ patentabil-
ity. See id. The entire analysis and decision rests on the
finding that independent claims 1 and 17 were patentable
over the prior art. See id. at *1-12.
1 CRESPE is the successor in interest to Cresta
Technology Corporation (“Cresta”), which originally
owned the ’585 patent.
4 MAXLINEAR, INC. v. CF CRESPE LLC
MaxLinear appealed the Board’s decision. This court
has jurisdiction under 28 U.S.C. § 1295(a)(4)(A) and 35
U.S.C. §§ 144, 319.
Two other IPRs had been instituted concerning the
’585 patent. 2 Each of these IPRs had the same Board
members as in the ’592 IPR but considered different prior
art. In the ’728 IPR, on October 21, 2015, the Board
issued a final written decision that claims 1-3, 5, 10, and
16-19 of the ’585 patent were unpatentable over the
Thomson reference, No. EP0696854, both alone and in
combination with other references. 2015 WL 6441485, at
*6-13. Cresta, the original owner of the ’585 patent and
CRESPE’s predecessor, appealed. While the present case
was pending on appeal, we affirmed the Board’s decision
in the ’728 IPR. CRESPE I, 670 F. App’x at 708. The
result of this affirmation is that independent claims 1 and
17 of the ’585 patent are now unpatentable. In the final
decision in the ’615 IPR, issued on the same day as the
’592 IPR, the Board, among other things, held claim 20 of
the ’585 patent unpatentable over Thomson in combina-
tion with other references. 2016 WL 8969202, at *21-22.
CRESPE appealed. Subsequently, we affirmed the Board,
so that claim 20 of the ’585 patent now stands unpatenta-
ble. CF CRESPE LLC v. Silicon Labs. Inc. (CRESPE II),
No. 2017-1072, 2017 WL 6044690, at *1 (Fed. Cir. Dec. 7,
2017) (per curiam).
DISCUSSION
In the ’728 and ’615 IPRs, the Board held that claims
1, 17, and 20, involved in this proceeding, were unpatent-
2 Silicon Labs., Inc. v. Cresta Tech. Corp., No.
IPR2015-00615, 2016 WL 8969202 (P.T.A.B. Aug. 11,
2016) (the “’615 IPR”); Silicon Labs., Inc. v. Cresta Tech.
Corp., No. IPR2015-00728, 2015 WL 6441485 (P.T.A.B.
Oct. 21, 2015) (the “’728 IPR”).
MAXLINEAR, INC. v. CF CRESPE LLC 5
able. Those decisions have subsequently been affirmed by
this court. Both parties agree that those prior decisions,
having been affirmed by our court, are binding in this
proceeding, as a matter of collateral estoppel, and they
could hardly argue otherwise.
It is well established that collateral estoppel, also
known as issue preclusion, applies in the administrative
context. See B & B Hardware, Inc. v. Hargis Indus., Inc.,
135 S. Ct. 1293, 1303 (2015). The Supreme Court has
held:
[It is] clear that issue preclusion is not limited to
those situations in which the same issue is before
two courts. Rather, where a single issue is before a
court and an administrative agency, preclusion al-
so often applies. Indeed, this Court has explained
that because the principle of issue preclusion was
so “well established” at common law, in those sit-
uations in which Congress has authorized agen-
cies to resolve disputes, “courts may take it as
given that Congress has legislated with the expec-
tation that the principle [of issue preclusion] will
apply except when a statutory purpose to the con-
trary is evident.
Id. (alteration in original) (quoting Astoria Fed. Sav. &
Loan Ass’n v. Solimino, 501 U.S. 104, 108 (1991)); see also
Restatement (Second) of Judgments § 83(1) (Am. Law
Inst. 1982) (explaining that, while there are limits, “a
valid and final adjudicative determination by an adminis-
trative tribunal has the same effects under the rules of
res judicata, subject to the same exceptions and qualifica-
tions, as a judgment of a court”). B & B Hardware is
particularly relevant here, as the Court held that “issue
preclusion should apply” to the final written decision of
the Trademark Trial and Appeal Board (“TTAB”). 135 S.
Ct. at 1310. The TTAB, at issue in B & B Hardware, and
the Board, in this case, are indistinguishable for preclu-
6 MAXLINEAR, INC. v. CF CRESPE LLC
sion purposes. Indeed, in SkyHawke Technologies, LLC v.
Deca International Corp., 828 F.3d 1373, 1376 (Fed. Cir.
2016), we reiterated that “administrative decisions by the
U.S. Patent and Trademark Office can ground issue
preclusion . . . .” See also Gould v. Mossinghoff, 711 F.2d
396, 398 (D.C. Cir. 1983) (“There is no doubt that in
proper circumstances decisions of the Board of Patent
Interferences may be given collateral estoppel effect.”).
Furthermore, “[i]t is undisputed that as a result of collat-
eral estoppel, a judgment of invalidity in one patent
action renders the patent invalid in any later actions
based on the same patent.” Mycogen Plant Sci., Inc. v.
Monsanto Co., 252 F.3d 1306, 1310 (Fed. Cir. 2001) (citing
Blonder-Tongue Labs., Inc. v. Univ. of Illinois Found., 402
U.S. 313, 349-50 (1971)), vacated on other grounds, 535
U.S. 1109 (2002).
The fact that the ’728 IPR became final while this
case was pending on appeal is irrelevant, as “issue preclu-
sion applies even though the precluding judgment . . .
comes into existence while the case as to which preclusion
is sought (this case) is on appeal.” Soverain Software LLC
v. Victoria’s Secret Direct Brand Mgmt., LLC, 778 F.3d
1311, 1315 (Fed. Cir. 2015); see also Mendenhall v. Bar-
ber-Greene Co., 26 F.3d 1573, 1577-80 (Fed. Cir. 1994)
(invalidity decision rendered while on appeal); Dana Corp.
v. NOK, Inc., 882 F.2d 505, 507-08 (Fed. Cir. 1989)
(same). That MaxLinear was not a party to the other IPRs
is similarly irrelevant since Cresta, the predecessor in
interest to CRESPE, was party to the original determina-
tion. See Blonder-Tongue, 402 U.S. at 349-50.
The preclusive effect of the prior adjudications, and
subsequent affirmations, has finally resolved the issue of
the unpatentability of independent claims 1 and 17 and
dependent claim 20 in this proceeding. Thus, the sole
remaining question at issue is whether the dependent
claims 4, 6-9, and 21, not addressed in the earlier IPRs,
are unpatentable.
MAXLINEAR, INC. v. CF CRESPE LLC 7
The Board’s decision as to the patentability of the de-
pendent claims in the ’592 appeal rested entirely on their
conclusion that claim 1 and 17 were not unpatentable and
contained no separate analysis or discussion of the de-
pendent claims. The Board held that “[b]ecause each of
challenged dependent claims []4, 6-9, . . . and []21 incorpo-
rate[s] the limitations of the respective independent
claims, we also conclude that Petitioner has not shown, by
a preponderance of the evidence, that those claims are
unpatentable.” ’592 IPR, 2016 WL 8946032, at *12. How-
ever, the holding of unpatentability of claims 1 and 17 in
the ’728 IPR, and the affirmance by our court, abrogates
the basis for the Board’s decision.
Since the patentability of claims 1 and 17 was the sole
basis for the Board’s decision in this IPR, and the Board
has not separately addressed the dependent claims, we
set aside the decision as to the dependent claims and
remand for further consideration. In SKF USA Inc. v.
United States, 254 F.3d 1022, 1028 (Fed. Cir. 2001), we
pointed out that “remand is generally required if [an]
intervening event may affect the validity of the agency
action.” See also Ethyl Corp. v. Browner, 989 F.2d 522,
524 (D.C. Cir. 1993) (highlighting a “tradition of allowing
agencies to reconsider their actions where events pending
appeal draw their decision in question”); Nat’l Fuel Gas
Supply Corp. v. Fed. Energy Regulatory Comm’n, 899 F.2d
1244, 1249–50 (D.C. Cir. 1990) (per curiam) (granting
remand following new legal decision). Intervening events
can include “a new legal decision” such as the affirmation
of the previous IPRs by our court. SKF USA Inc., 254 F.3d
at 1028.
We note that the collateral-estoppel effect of an ad-
ministrative decision of unpatentability generally re-
quires the invalidation of related claims that present
identical issues of patentability. In Ohio Willow Wood Co.
v. Alps South, LLC, 735 F.3d 1333, 1342 (Fed. Cir. 2013),
we pointed out that “precedent does not limit collateral
8 MAXLINEAR, INC. v. CF CRESPE LLC
estoppel to patent claims that are identical . . . . If the
differences between the unadjudicated patent claims and
adjudicated patent claims do not materially alter the
question of invalidity, collateral estoppel applies.” See also
Soverain, 778 F.3d at 1315; Bourns, Inc. v. United States,
537 F.2d 486, 493 (Ct. Cl. 1976) (per curiam).
On remand, the Board must consider whether the de-
pendent claims 4, 6-9, and 21 can survive the unpatenta-
bility of claims 1 and 17 from which they depend in view
of the prior art cited in the ’728 IPR. 3 The Board must
decide whether the remaining claims present materially
different issues that alter the question of patentability,
making them patentably distinct from claims 1 and 17.
Remand of these claims will allow the Board to evalu-
ate CRESPE’s argument concerning the surviving claims
and allow the Board to consider the dependent claims in
light of the unpatentability of claims 1 and 17.
CONCLUSION
The decision of the Board is vacated. We remand this
case to the Board so that it may consider the patentability
3 We note that CRESPE does not defend claims 2, 3,
16, 18, and 19 on appeal, even though these claims were
upheld in the ’592 IPR, 2016 WL 8946032, at *12. These
claims were held unpatentable in the ’728 IPR, 2015 WL
6441485, at *13, and this court affirmed by a Rule 36
Judgement in CRESPE I, 670 F. App’x at 708. It is un-
necessary to remand claim 20 to the Board, as the un-
patentability of this claim in the ’615 IPR, 2016 WL
8969202, at *21, was affirmed in CRESPE II, 2017 WL
6044690, at *1.
MAXLINEAR, INC. v. CF CRESPE LLC 9
of the surviving disputed dependent claims 4, 6-9, and
21. 4
VACATED AND REMANDED
4 We discern no independent argument made to the
Board concerning why claims 4, 8, and 9 should be con-
sidered separately patentable. On remand, the Board may
consider whether CRESPE has waived arguments con-
cerning these claims.