PTAB Setting New Precedents

By: Emily A. Curtis  |   February 2, 2016

The U.S. Patent and Trademark Office Patent Trial and Appeal Board (“PTAB”) recently designated two of its decisions as precedential. The cases relate to restrictions on filing cases at the PTAB specifically with regard to estoppel and time limits.

Claim Estoppel

In Westlake Services, LLC v. Credit Acceptance Corp., the PTAB determined “that estoppel is applied on a claim-by-claim basis.” CBM2014/00176, Paper 28 at 5 (PTAB May 14, 2015). The PTAB instituted a trial for some, but not all of the claims challenged in the Petitioner’s original filing. Id. at 2. After this institution, the Supreme Court issued Alice Corp. Pty. LTD v. CLS Bank Int’l, 134 S.Ct 2347 (2014). Westlake Services, LLC, Paper 28 at 2. The Petitioner then filed the Petition in this case, which was instituted with respect to the claims not instituted in the first action, claims 10-12 and 14-33. Id. at 3. A Final Written Decision relating to the first action was then issued by the PTAB finding claims 1-9, 13, and 34-42 unpatentable. Id.

Under 35 U.S.C. § 325(e)(1),
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.

Thus, Petitioners are estopped from requesting or maintaining proceedings “on any ground that the petitioner raised or reasonably could have raised during the trial.” 37 C.F.R. §42.73(d)(1). Under 35 U.S.C. §328(a), where “a post-grant review is instituted and not dismissed under this chapter, 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.” The Patent Owner challenged the second Petition arguing the claims had been previously challenged where a Final Written Decision was issued and the Petitioner was estopped from filing another Petition. Westlake Services, LLC, Paper 28 at 4. The PTAB, however, agreed with Petitioner that estoppel based on a Final Written Decision is on a claim-by-claim basis. Id. at 5. The Final Written Decision did not relate to any of claims 10-12 and 14-33, challenged by the second Petition, as the challenge to those claims was not instituted by the PTAB in that case. Id. According to the PTAB, “claims 10-12 and 14-33 are not claims in a patent that have resulted in a final written decision under Section 328(a), and thus, under Section 325(e)(1), estoppel does not apply to those claims.” Id. As such, when a Petition is instituted for only a portion of a patent’s claims, the Petitioner may file a subsequent Petition related to the uninstituted claims.

Inter Partes Review Time Bar

In LG Electronics, Inc. v. Mondis Technology Ltd., the PTAB considered the one year time bar to petition for inter partes review after litigation has begun in a district court. IPR2015-00937, Paper 8 at 2 (PTAB September 17, 2015). This Petition relates to U.S. Patent Number 6,513,088, which has been the subject of a number of proceedings, including litigation at the district courts, an ex parte reexamination request filed by LG, and a previous inter partes reexamination. Id. at 2-3. Under 35 U.S.C. § 315(b),

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.

Modis served two Complaints on LG, one in 2008 and the other in 2014. LG Electronics, Inc., Paper 8 at 4. The Petition in this case was filed by LG within one year of the 2014 Complaint. Id. LG contends that its petition is timely because it is within one year of a Complaint, even though it was not within one year of the first Complaint. Id. The PTAB disagreed and determined that “the express language of §315(b) bars [them] from instituting an inter partes review.” Id. at 5.

LG further argued that the settlement reached in the 2008 case left the parties “in the same legal positon with respect to ‘Unreleased Products’ as though the 2008 Complaint had never been served.” Id. LG argued that this allowed Mondis to later sue LG for infringement and should likewise allow for this inter partes review. Id. at 6. In the 2008 case, some of the claims relating to computer monitors were dismissed with prejudice, while the “Unreleased Products” were dismissed without prejudice. Id. This led the PTAB to determine the parties were not left as they were before the 2008 Complaint as there were limitations on what could be asserted and where a subsequent claim must be filed. Id. LG chose to enter the settlement agreement allowing future actions and still has the option of filing an ex parte reexamination, so the PTAB does not agree that public policy concerns favor LG’s interpretation of § 315(b). Id. at 7-8. Therefore, a Petition for inter partes review must be filed within one year of the first Complaint filed against the Petitioner. The Petition here was filed more than one year after the first Complaint and was barred. Id. at 8.