"The U.S. Court of Appeals for the Federal Circuit (CAFC) on Wednesday reversed in part, vacated in part, and remanded a final written decision from the Patent Trial and Appeal Board (PTAB) in an inter partes review (IPR) proceeding filed by Apple, Inc. The court concluded that the Board was precluded from finding the challenged claims of a patent owned by Smart Mobile Technologies LLC patentable, where a related patent with substantially similar claims had been found unpatentable in a prior IPR."
"Apple challenged U.S. Patent No. 8,472,936, along with related U.S. Patent Nos. 8,761,739 and 8,442,501, related to a mobile device that is dynamically software configurable for a variety of environments. The mobile device communicates with a server that stores functional instruction sets and software. When the mobile device moves to a new environment, it can "switch itself for optimal performance" by downloading a functional instruction set from the server, as the key term at issue was "dynamically configurable.""
The Federal Circuit reversed in part, vacated in part, and remanded a PTAB final written decision in an IPR involving Smart Mobile Technologies and Apple. The court held that issue preclusion prevented the Board from finding patentable claims that were substantially similar to claims previously found unpatentable in a related IPR. Apple challenged U.S. Patent No. 8,472,936 and related patents covering a dynamically software configurable mobile device that downloads functional instruction sets from a server. Prior IPRs found all challenged claims of two related patents unpatentable as obvious, and Smart Mobile did not appeal those decisions, rendering them final. The Board initially declined to apply issue preclusion in IPR2022-00981, but the Federal Circuit reversed that determination and remanded for further proceedings consistent with its opinion.
Read at IPWatchdog.com | Patents & Intellectual Property Law
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