PTO Designates New Precedential Opinions on Final Written Decision Estoppel and the One-Year Time Bar for IPR

On Wednesday, January 13, 2016, the PTAB designated two new “precedential” decisions, providing authority on issues of estoppel stemming from a final written decision and the one-year deadline for IPR filings:

• Westlake Services, LLC v. Credit Acceptance Corp., CBM2014-00176 (Paper. No. 28) (May 14, 2015)
• LG Electronics v. Mondis Technology, Ltd., IPR2015-00937 (Paper No. 8) (Sept. 17, 2015)

In Westlake, the petitioner filed a petition (CBM2014-00008) challenging all claims of a patent, but the Board only instituted and rendered a final written decision on some of the claims. When Westlake filed a second petition (CBM2014-00176) challenging the subset of the claims for which the Board did not institute review, Credit Acceptance argued that the petition was barred under 35 U.S.C. § 325(e)(1) because “th[e] [earlier institution and final written] decisions [together] resolved the Petitioner’s challenges to all claims.” Paper 25 at 2-3. The Board disagreed, finding “that estoppel is applied on a claim-by-claim basis” because, “[b]y its terms, estoppel is invoked under Section 325(e)(1) as to ‘a claim in a patent’ that ‘results in a final written decision under’ 35 U.S.C. § 328(a).” Paper No. 28 at 5.

In past decisions, the Board has found that service of a subsequent complaint for infringement of a patent does not restart 35 U.S.C. § 315(b)’s one-year window for a petitioner to file an IPR petition after being served with an earlier complaint for infringement, unless the earlier complaint is dismissed without prejudice, leaving the parties as though the action had never been filed. See, e.g., Macauto U.S.A. v. BOS GmbH & KG, IPR2012-00004, Paper No. 18 at 15 (Jan. 24, 2013); Universal Remote Control Inc. v. Universal Elecs. Inc., IPR2013-00168, Paper No. 9 (Aug. 26, 2013). In LG Electronics, the Board reiterated this reasoning and designated its decision precedential.