The U.S. Court of Appeals for the Federal Circuit (CAFC) on Friday in SoftView LLC v. Apple Inc. held that the Patent Trial and Appeal Board (PTAB) properly applied the estoppel provision of 37 CFR § 42.73(d)(3)(i) in invalidating Softview’s amended claims submitted in inter partes and ex parte reexaminations. The PTAB held and the CAFC affirmed that the claims were not patentably distinct from claims previously invalidated in inter partes review (IPR) proceedings involving SoftView, and the court upheld the U.S. Patent and Trademark Office’s authority under the America Invents Act (AIA) to promulgate the estoppel rules. However, the CAFC limited its application to new or amended claims and remanded the case for reconsideration of claims issued prior to the reexaminations.

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