Apple Inc. et al. v. SoftView LLC

This case, Apple Inc. et al. v. SoftView LLC (90/009,994), involves an ex parte reexamination of U.S. Patent No. 7,461,353, initiated by Apple Inc. and Motorola Mobility LLC against SoftView LLC. SoftView LLC is a patent assertion entity (PAE) or Non-Practicing Entity (NPE) that has developed CAD drafting systems and vector graphic display systems, including web browsers for mobile devices since 1982. They have asserted their patents against various mobile phone manufacturers. The plaintiff-requesters, Apple Inc. and Motorola Mobility LLC, are major operating companies in the mobile technology sector. Apple is a global technology company known for its consumer electronics, software, and online services. Motorola Mobility, originally part of Motorola Inc., is a telecommunications equipment company that manufactures smartphones and other mobile devices, and has been involved in extensive patent litigation with Apple.

The patent at issue, U.S. Patent No. 7,461,353, is titled "Scalable display of internet content on mobile devices." It describes technology that enables mobile devices to support resolution-independent scalable display of Internet (Web) content, allowing web pages to be scaled (zoomed) and panned for better viewing on smaller screen sizes while maintaining the original layout. The accused technology would broadly encompass mobile devices and their web browsing capabilities offered by Apple and Motorola Mobility.

This ex parte reexamination is taking place within the United States Patent and Trademark Office (USPTO). Ex parte reexaminations are conducted by USPTO examiners, with the patent owner primarily participating after the request is filed, though a new procedure effective April 5, 2026, allows patent owners to submit arguments earlier to determine if a "substantial new question of patentability" exists. This particular reexamination was stayed pending an inter partes review (IPR) proceeding, which invalidated 18 of the 319 claims of the '353 patent. After the IPR, the reexamination reopened, and SoftView amended claims, which were initially deemed patentable over prior art. However, the Patent Trial and Appeal Board (PTAB) later held many claims unpatentable under an estoppel provision (37 C.F.R. § 42.73(d)(3)(i)), finding them not patentably distinct from the claims canceled in the IPR. This case is notable for its direct linkage to a Federal Circuit appeal, SoftView LLC v. Apple Inc. (No. 23-1005), which clarified the scope of patent owner estoppel in inter partes reexamination proceedings following an IPR. The Federal Circuit affirmed the USPTO's authority to issue the estoppel regulation and its application to new or amended claims, but notably vacated the PTAB's decision as it applied to previously issued, unamended claims, holding that the regulation applies to "obtaining" a claim, not "maintaining" an existing one. This decision significantly impacts patent owners' ability to defend existing claims against IPR estoppel in subsequent USPTO proceedings.

The legal developments concerning SoftView LLC's U.S. Patent No. 7,461,353 predominantly involve administrative proceedings at the USPTO and subsequent appeals to the Federal Circuit, rather than a traditional patent infringement litigation timeline in a district court. While SoftView has been involved in patent litigation against various mobile device manufacturers, the provided information focuses on the validity challenges to the '353 patent.

Here's a chronological overview of the key legal developments:

Parallel PTAB IPR Proceedings and Their Effect:

• October 2012: An inter partes review (IPR2013-00007) was initiated by Kyocera challenging the '353 patent. This was among the first IPR petitions filed under the America Invents Act (AIA). The IPR came in response to litigation SoftView LLC had filed.
• September 4, 2013: A district court case, SoftView LLC v. Apple Inc. (C.A. No. 12-989-LPS, D. Del.), was stayed pending the outcome of the IPR. The court had previously denied a stay in July 2012. At the time of the stay, fact discovery was complete, and a Markman opinion had been issued. The IPR had granted review of all asserted claims of the patents-in-suit.
• March 27, 2014: The PTAB issued a final written decision in IPR2013-00007, invalidating 18 of the 319 claims of the '353 patent.
• November 2015: The stay on the ex parte reexamination (90/009,994) was lifted following the conclusion of the IPR.

Ex Parte Reexamination and Subsequent Appeals:

• Post-November 2015 (specific date unknown, but before August 8, 2017): SoftView amended 107 of the challenged claims in the ex parte reexamination (90/009,994), incorporating limitations from claims that were invalidated in the IPR. Initially, these amended claims were found patentable over prior art by the USPTO examiner.
• Date of PTAB Decision (Prior to October 4, 2022): The Patent Trial and Appeal Board (PTAB) reversed the examiner's obviousness rejection but entered a new ground of rejection. The PTAB applied the estoppel provision of 37 C.F.R. § 42.73(d)(3)(i) to reject both the amended and some previously issued claims. The PTAB found these claims to be "not patentably distinct" from the claims invalidated in the IPR, reasoning that they were either essentially the same as a canceled claim or a combination of previously invalidated limitations. SoftView challenged the PTAB's application of this estoppel provision to the issued claims.
• October 4, 2022: SoftView LLC appealed the PTAB's decision to the Federal Circuit (Case No. 23-1005).
• March 2023: USPTO Director Kathi Vidal intervened in the Federal Circuit appeal to defend the regulation and the PTAB's application of it.
• June 3, 2024: Oral arguments were heard in a related Federal Circuit case, SoftView LLC v. Apple Inc. (Case No. 23-1006).
• June 6, 2024: The Federal Circuit issued a Rule 36 Judgment in SoftView LLC v. Apple Inc. (Case No. 23-1006), affirming the PTAB's decision in a nonprecedential ruling.
• July 26, 2024: The Federal Circuit issued a precedential opinion in SoftView LLC v. Apple Inc. (Case No. 23-1005). The Federal Circuit partially vacated and remanded the PTAB's decision.
  • The court upheld the validity of 37 C.F.R. § 42.73(d)(3)(i) and the USPTO's statutory authority to promulgate it, rejecting SoftView's arguments that the regulation improperly extended beyond common law estoppel.
  • The Federal Circuit affirmed the PTAB's application of the regulation to the amended claims, finding them not patentably distinct from the canceled claims.
  • Crucially, the court vacated the PTAB's decision regarding the previously issued claims, holding that the estoppel provision in 37 C.F.R. § 42.73(d)(3)(i) applies to "obtaining" new or amended claims, but not to "maintaining" existing claims. This distinction limits the scope of patent owner estoppel in subsequent USPTO proceedings.
• Post-July 26, 2024 (specific date unknown): SoftView has since filed a petition for en banc rehearing at the Federal Circuit.

In the ex parte reexamination case of Apple Inc. et al. v. SoftView LLC (Control Number 90/009,994), Apple Inc. and Motorola Mobility LLC are the requesters. While direct counsel of record for the ex parte reexamination filing itself is not explicitly detailed in publicly available summaries as it would be for a district court case or an inter partes review, attorneys representing Motorola Mobility LLC in the related Federal Circuit appeal (SoftView LLC v. Apple Inc., Case: 23-1005), which directly involved the reexamination, have been identified. These attorneys effectively represent the interests of the requesters (plaintiffs in the broader sense of challenging the patent) in the broader legal context surrounding this reexamination.

The identified counsel representing Motorola Mobility LLC in the related Federal Circuit appeal include:

• Madeleine C. Laupheimer

  • Role: Counsel
  • Firm: WilmerHale, Boston, MA
  • Relevant Experience: Ms. Laupheimer represents clients in intellectual property litigation across federal district courts, appellate courts, and the Patent Trial and Appeal Board (PTAB). She previously clerked for Judge Richard G. Taranto of the US Court of Appeals for the Federal Circuit.

• John C. Alemanni

  • Role: Lead or backup counsel (in PTAB and Federal Circuit appeals).
  • Firm: Kilpatrick Townsend & Stockton LLP, Raleigh, NC
  • Relevant Experience: Mr. Alemanni specializes in trials before the PTAB, serving as lead or backup counsel in over 130 trials, and handles related appeals to the U.S. Court of Appeals for the Federal Circuit. He is co-chair of Kilpatrick's PTAB litigation group and has been recognized as a top patent practitioner.

• David A. Reed

  • Role: Attorney.
  • Firm: Kilpatrick Townsend & Stockton LLP, Atlanta, GA
  • Relevant Experience: Mr. Reed focuses his practice on patent infringement disputes, particularly in district court litigation, post-grant proceedings (over 40 IPR/PGR proceedings), and related appeals to the Federal Circuit. He has tried cases to verdict in various jurisdictions.

Additionally, Edmund Hirschfeld of Orrick, Herrington & Sutcliffe LLP is mentioned in connection with the Federal Circuit appeal SoftView LLC v. Apple Inc. While the specific client is not explicitly stated in the snippet, given the context of the appeal, he is likely representing Apple or Motorola Mobility.

• Edmund Hirschfeld
  • Role: Senior Associate, focusing on appellate litigation.
  • Firm: Orrick, Herrington & Sutcliffe LLP, New York, NY
  • Relevant Experience: Mr. Hirschfeld specializes in high-stakes appeals and has authored successful briefs in the U.S. Supreme Court and dozens of briefs in federal and state appellate courts, covering a range of subjects including patent law.

It is important to note that ex parte reexamination proceedings are primarily between the patent owner and the USPTO examiner. The role of the third-party requester (Apple and Motorola Mobility) is more limited after initiating the reexamination. The identified counsel primarily represent the requesters in broader adversarial proceedings (like the Federal Circuit appeal) that stem from or are related to the reexamination. Specific in-house counsel for Apple Inc. or Motorola Mobility LLC directly filing documents in the 90/009,994 reexamination are not explicitly named in the public search results.

Based on the Federal Circuit appeal SoftView LLC v. Apple Inc. (No. 23-1005), which directly stemmed from the ex parte reexamination 90/009,994, the counsel of record representing SoftView LLC are:

• Name: R. Alan Burnett
  • Role: Lead Counsel (argued for appellant SoftView LLC)
  • Firm: Law Office of R. Alan Burnett, Bellevue, WA
  • Relevant experience: Alan Burnett argued for SoftView LLC in the Federal Circuit appeal regarding the patent owner estoppel provision in reexamination proceedings following an IPR.

While other attorneys may have been involved in the initial ex parte reexamination or the various IPRs, R. Alan Burnett is explicitly listed as arguing counsel for SoftView LLC in the Federal Circuit case that provides significant clarification on the reexamination's outcome.

It's important to note that the reexamination itself is a USPTO proceeding, and the Federal Circuit appeal concerned the PTAB's decision within that reexamination. While counsel from the Federal Circuit appeal are highly likely to have been involved in the PTAB and reexamination stages, direct docket entries for the reexamination specifically listing all counsel were not found in the search results.