The PTAB recently deemed as precedential two decisions that further clarify when a petitioner can have a second chance to challenge a patent before the Board. In order for a PTAB to be designated precedential, it must be nominated – anyone can nominate, including the public. Then the chief judge, the director, and a majority of the PTAB judges who vote on it must agree that opinion should be precedential. Because of the length of the process, decisions are usually retroactively designated as precedential.

The precedential decisions explain that (1) estoppel at the PTAB applies on a claim-by-claim basis and only to those claims that have resulted in a final written decision (CBM2014-00176), and (2) a second complaint does not restart the one year clock to file a petition when a first complaint was dismissed both with and without prejudice, at least under the facts of this particular IPR (IPR2015-00937).

In CBM2014-00176,1 the Petitioner requested review of claims 1-42 of U.S. 6,950,807. The PTAB instituted a trial as to a subset of the challenged claims (claims 1-9, 13, and 34-42) and issued a Final Written Decision finding those claims unpatentable.

The same Petitioner requested review of the remaining claims of the same patent, (i.e., claims 10-12, and 14-33, which were not the subject of the first CBM), resulting in the institution of this case. The Patent Owner moved for termination of the second CBM, arguing that a final decision in a post grant proceeding applies to “any patent claim challenged by the petitioner,” included those claims that were challenged but not instituted in the first CBM. If the PTAB took this approach, the Petitioner would be estopped from challenging any claims of the ‘807 before the Board.

The PTAB, however, decided that “estoppel is applied on a claim-by-claim basis” and thus, estoppel does not apply to non-instituted claims because those claims did not result in a final written decision. The PTAB therefore denied the Patent Owner’s motion for termination of the second CBM.

In IPR2015-00937,2 at issue was whether “a complaint” in 35 U.S.C. § 315(b) refers to a first complaint that was dismissed both with and without prejudice. In other words, the PTAB ruled on whether the deadline under § 315(b) barring an IPR from being filed more than one year after the date of service of a complaint applies to the first complaint, or whether the clock restarts after service of the second complaint.

The Petitioner (LG) was served with a complaint alleging infringement of U.S. 6,513,088 on two separate occasions: January 11, 2008 and October 16, 2014. The first complaint was dismissed both with and without prejudice. Within one year of receiving the second complaint, the Petitioner requested inter partes review of the ‘088 patent stating that, even though the petition was filed one year after the first complaint was served: (1) the petition was filed within one year of receiving “a complaint” thereby satisfying the requirement of § 315(b); (2) after the dismissal of the first lawsuit, both parties were left in the same position as though the first complaint had never been filed, and (3) equitable and public policy consideration favor a “broad” interpretation of § 315(b).

The PTAB interpreted the statutory timeline to end one year after the first complaint was filed because the parties were not left as though the action resulting from the first complaint had never been brought. The PTAB reasoned that the parties were not, in fact, in the same position after settlement of the 2008 complaint because the parties were prohibited from pursuing their prior claims with respect to certain products. Further, the parties were obligated to uphold the terms of their settlement agreement. Also, the PTAB found insufficient equitable or public policy reasons to allow LG a chance at filing an IPR, for example, LG still has the option to challenge the patent at the PTO in an ex parte reexamination.