On January 12, 2016, the PTAB identified two of its recent decisions as being precedential. These two decisions are in line with prior panel decisions and solidify the Board’s policy with regard to aspects of the one year IPR bar and the application of estoppels at the PTAB.
- In LG Electronics, Inc. v. Mondis Tech Ltd., IPR2015-00937, Paper 8 (PTAB Sept. 17, 2015), LG had previously been served with two complaints alleging infringement of the patent at issue, one in 2008 and one in 2014. The 2008 case settled and was dismissed in part with prejudice. The 2014 case complaint was served less than a year prior to filing the petition. 35 U.S.C. § 315(b) states:
“An inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.”
LG argued that “a complaint” meant “a latest” complaint. Thus, LG submitted that the 2014 complaint rekindled their ability to file an IPR. The Board disagreed and refused to institute trial because the petition was filed more than one year after the complaint from the 2008 case was served.
- In Westlake Services, LLC v. Credit Acceptance Corp., CBM2014-00176, Paper 28 (PTAB May 14, 2015), Westlake Services filed a follow-on CBM petition (CBM2014-00176) after the Board’s partial Institution Decision in CBM2014-00008. In that Institution Decision, the Board opted not to consider the patentability of claims 10-12 and 14-33 under § 101. In the first CBM, the Board ultimately found claims 1-9 and 34-42 unpatentable under § 101. Following issuance of the Final Written Decision in CBM2014-00008, Patent Owner Credit Acceptance Corp. filed a motion to terminate the second trial, arguing that Westlake Services was estopped under 35 U.S.C. § 325(e)(1). That section states: “The petitioner in a post-grant review of a claim in a patent under this chapter that results in a final written decision under section 328(a), or the real party in interest or privy of the petitioner, may not request or maintain a proceeding before the Office with respect to that claim on any ground that the petitioner raised or reasonably could have raised during that post-grant review.”
Credit Acceptance argued that a Final Written Decision incorporates the Institution Decision by reference and, thus, the Final Written Decision applies to all claims challenged in a Petition, not just the claims on which trial is instituted. The Board disagreed, finding that, at the PTAB, non-instituted claims are not claims in a patent that have resulted in a Final Written Decision. The petitioner was thus free to pursue the follow-on CBM proceeding, at least as far as § 325(e)(1) is concerned.