Facebook, Inc. v. Express Mobile

On delegated Director Review of the Board's Final Written Decision on Remand, the panel vacated that decision and issued a new Final Written Decision holding that Petitioner had not shown claims 1-4 and 6 unpatentable. Under the September 16, 2025 Memorandum on prior findings of fact and conclusions of law, a district court jury had found claim 1 not invalid on the same prior art, and Petitioner identified no meaningfully different evidence or arguments and no other reasons requiring a different outcome. Where a jury has found the same claims not invalid on the same prior art, a petitioner must show materially different evidence or arguments, or other reasons, to justify a contrary Board result. A narrow remand mandate does not excuse the Board from considering the intervening adjudication, and the petitioner's attempts to discount the verdict as a black box or thinly presented will not suffice. Decision under review: the Board's Final Written Decision on Remand (Paper 60), which again found claims 1-4 and 6 of the '168 patent unpatentable after the Federal Circuit's remand on the construction of "style", despite an intervening D. Del. jury verdict finding claim 1 not invalid on the same prior art grounds. The Director's Delegation Order (Paper 65) held that the Federal Circuit mandate did not require ignoring intervening adjudications or limiting the analysis to the "style" issue. It delegated the question whether Petitioner presented meaningfully different evidence and arguments or other reasons requiring a different outcome. Petitioner argued the jury did not contest "style", the presentation was brief (about five minutes on the Reynolds-Lemay combination), and the black box verdict deserves no weight. The panel found no material differences in the prior art embodiments, the reasons to combine, or any binding admissions. Although the verdict form gave little guidance, Patent Owner's expert contested at least one claim 1 limitation and the reasons to combine. The jury therefore resolved at least one dispositive factual dispute for Patent Owner, and Petitioner did not explain how the evidence differs between the proceedings. Order: the Final Written Decision on Remand (Paper 60) is vacated and Petitioner has not shown claims 1-4 and 6 unpatentable. The panel did not reach the second delegated question, the timeliness of Petitioner's claim mapping on remand. KEY QUOTE: "Petitioner's briefing does not identify any “meaningfully different evidence and arguments” that would “warrant a different outcome under the preponderance of the evidence standard.”" (Paper 68, p. 5)