Decisions Clarify Estoppel and 12-month Window Questions

Earlier this week I pointed out my Top 5 PTAB decisions for 2015. Also this week, the Board highlighted two of its own 2015 decisions, designating both precedential.

The first decision, LG is more noteworthy given it addresses the 12-month window, a topic that can get quite complicated in the case of multiple complaint filings.  The second, Westlake was previously designated informative in 2015, and is a straightforward pronouncement that 325(e)(1) estoppel is applied on a claim-by-claim basis.

LG Electronics, Inc. v. Mondis Tech Ltd.,IPR2015-00937, Paper 8 (PTAB Sept. 17, 2015) - More particularly, this decision pertains to interpretation of “served with a complaint” for purposes of triggering the one-year time bar set forth in 35 U.S.C. § 315(b). The decision analyzes the case where a second complaint is filed after a first , earlier in time, complaint is dismissed without prejudice in some respects, but not all. 

Westlake Services, LLC v. Credit Acceptance Corp.CBM2014-00176, Paper 28 (PTAB May 14, 2015) – This order interprets the estoppel provision of 35 U.S.C. § 325(e)(1).  That is, claims denied trial do not trigger 325(e)(1) estoppel where other claims of the patent move forward through trial. This decision tracks the plain language of the statute, and in that respect, is fairly straightforward.