from the United States Patent and Trademark Office, Patent
Trial and Appeal Board in No. IPR2015-00592.
Gregory Schodde, McAndrews, Held & Malloy, Ltd., Chicago,
IL, argued for appellant. Also represented by Ronald Spuhler.
Robert Smith, Lando & Anastasi, LLP, Cambridge, MA,
argued for appellee. Also represented by Eric P. Carnevale.
Dyk, Schall, and Reyna, Circuit Judges.
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,
Board based its decision on an analysis of independent 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 Fed.Appx.
707, 708 (Fed. Cir. 2016) (per curiam). Because the Board did
not address arguments concerning patentability 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.
'585 patent "relates to a broadband television
signal 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 frequency, filters
out interfering signals, and then demodulates or decodes the
signal of interest. In layman's terms, the television
signal receiver takes incoming television broadcast signals
and processes the signal into a viewable medium for eventual
appeal concerns the final written decision of the Board
issued on August 11, 2016. This proceeding commenced on
January 28, 2015, when MaxLinear petitioned for an inter
partes review of claims 1-21 of the '585 patent. 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"). In the final written
decision, the Board held that the challenged claims were not
shown to be unpatentable over the prior art. Id. at
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.
Board based its finding of nonobviousness entirely 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 dependent
claims 2-4, 6-9, 16, and 18-21 incorporate the limitations of
the respective independent claims, we also conclude that
[p]etitioner has not shown, by a preponderance of the
evidence, that those claims are unpatentable."
Id. at *12. The Board never mentioned any separate
arguments concerning the dependent claims' patentability.
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.
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.
other IPRs had been instituted concerning the '585
patent. 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 Fed.Appx. 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
combination with other references. 2016 WL ...