ZyXEL Communications Corp. v. UNM Rainforest Innovations, No. 2022-2220, 2022-2250__ (July 22, 2024) (precedential) (3-0); Patent No. 8,265,096

Key point(s):

• A collateral estoppel argument first raised at oral argument was not waived when the IPR decision forming the basis for collateral estoppel was also the subject of the appeal and not yet affirmed.
• The Board may sua sponte identify a patentability issue for a proposed substitute claim based on the prior art of record regardless of whether the petitioner argued the combination.

Tennant Co. v. Oxygenator Water Technologies, Inc., No. 2022-2304 (July 23, 2024) (nonprecedential); Patent No. RE45,415E

Key point:

• A party cannot make one argument when seeking issuance of its patent and the opposite argument in defending the patent in post-grant review.

Netflix, Inc. v. Avago Technologies International Sales Pte. Limited, No. 2022-1936, 2022-2168 (July 23, 2024) (nonprecedential); Patent No. 7,457,722

Key point:

• Material in an appendix to a patent application is considered incorporated by reference into that application if the context makes clear that the material is effectively part of the patent application as if it were explicitly contained therein and should be considered in an anticipation or obviousness analysis.

ZyXEL Communications Corp. v. UNM Rainforest Innovations, No. 2023-1272 (July 23, 2024) (nonprecedential); Patent No. 8,565,326

Key point:

• In an IPR, the Motion to Amend Pilot Program permits a patent owner to respond to the Board’s preliminary guidance to address and correct errors in its motion.

Juniper Networks, Inc. v. Correct Transmission, LLC, No. 2023-1046, 2023-1326 (July 24, 2024) (nonprecedential); Patent Nos. 7,283,465 and 7,983,150

Key point:

• In an IPR, the Board may weigh the credibility of opposing expert opinions and determine to disregard an opinion it finds unpersuasive.

The Sherwin-Williams Company v. PPG Industries, Inc., No. 2022-2059, 2022-2102 (July 25, 2024) (nonprecedential); Patent Nos. 8,617,663, 8,835,012, 9,242,763, 9,415,900, and 9,862,854

Key point:

• Judicial estoppel applies when a party seeks to take a position in a later proceeding that is clearly inconsistent with a position in an earlier proceeding that persuaded the adjudicator and led to a successful decision in the earlier proceeding.

Softview LLC v. Apple Inc., Motorola Mobility LLC, No. 2023-1005, 2023-1007 (July 26, 2024) (precedential) (3-0); Patent No. 7,461,353

Key point:

• The estoppel provision of 37 CFR § 42.73(d)(3)(i) applies to “obtaining” a new or amended claim, but not to maintaining an existing issued claim.