In its petition for rehearing, Verstata Development Group raised the argument that SAP was precluded from pursuing the covered business method patent review because of claim and issue preclusion (recall that the Federal Circuit has affirmed Versta’s judgment against SAP). Although the Board found that Versta had waived that argument, the Board still addressed it in a footnote. Turning to the merits of the claim and issue preclusion argument, the Board indicated that the defenses of claim and issue preclusion were not applicable after trial is instituted. The Board reached this conclusion based on the fact that it may proceed to reach a final written decision even after the petitioner is no longer participating in the proceeding. The Board explained “once trial is instituted, the Patent Trial and Appeal Board shall issue a final written decision with respect to the patentability of any patent claim challenged by the petitioner.…To make such a determination, the Petitioner need not be a party. Therefore, the defense of issue and claim preclusion would have no effect on the Board’s statutory duty to determine patentability.” This suggests that if a patent owner has a defense of claim and issue preclusion, it should raise that issue in a preliminary response even though a preliminary response is optional. See SAP Am., Inc. v. Versata Dev. Group, Inc., CBM2012-00001, Paper 81 (Sept. 13, 2013).