“We now make precedential . . . .”

In the Federal Circuit’s recent opinion in CUPP COMPUTING AS v. TREND MICRO INC., No. 2020-2262 (Fed. Cir. Nov. 16, 2022), the court made a statement that caught my eye. Judge Dyk writing for the court and the other members of the panel (Judges Taranto and Stark) wrote “We now make precedential . . . .” More specifically, he wrote:

We now make precedential the straightforward conclusion we drew in an earlier nonprecedential opinion: “[T]he Board is not required to accept a patent owner’s arguments as disclaimer when deciding the merits of those arguments.” VirnetX Inc. v. Mangrove Partners Master Fund, Ltd., 778 F. App’x 897, 910 (Fed. Cir. 2019). A rule permitting a patentee to tailor its claims in an IPR through argument alone would substantially undermine the IPR process. Congress designed inter partes review to “giv[e] the Patent Office significant power to revisit and revise earlier patent grants,” thus “protect[ing] the public’s paramount interest in seeing that patent monopolies are kept within their legitimate scope.” Cuozzo Speed Techs., LLC v. Lee, 579 U.S. 261, 272, 279-80 (2016) (internal quotation marks, citation, ellipses, and alterations omitted). If patentees could shapeshift their claims through argument in an IPR, they would frustrate the Patent Office’s power to “revisit” the claims it granted, and require focus on claims the patentee now wishes it had secured. See also Oil States Energy Servs., LLC v. Greene’s Energy Grp., LLC, 138 S. Ct. 1365, 1373 (2018) (emphasis altered) (“[T]he decision to grant a patent is a matter involving . . . the grant of a public franchise. Inter partes review is simply a reconsideration of that grant.”).

That struck me as such an unusual choice of words for a court to write; so, I was curious how often the Federal Circuit uses the phrase “we now make precedential.” Interestingly, this is the only time the court has used the phrase. The CCPA never used the phrase — but, now that I think about it, due to the size of their panels, each of their opinions was precedential. And, the Supreme Court has never used the phrase. Odd.

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