The PTAB has recently designated two of its prior decisions as precedential. These are only the second and third decisions from AIA reviews to be designated as such by the Board. The first decision, LG Electronics Inc. v. Mondis Tech Ltd., relates to the meaning of the term “served with a complaint” in 35 USC § 315(b). In its decision denying institution of LG’s IPR petition, the Board held that LG’s petition, filed within one year of Mondis’s second complaint, but more than a year after Mondis’s first complaint alleging infringement of the patent at issue, fell outside of the one-year time bar for filing an inter partes review. The Board declined “LG’s invitation to amend § 315(b) by inserting either ‘latest’ or ‘second’ into the statute,” and instead interpreted “a complaint” plainly as any complaint. LG had also argued that the settlement agreement following the first lawsuit did not cover all of its accused products and that, following dismissal of that suit, the parties were left in the same legal position with respect to the “unreleased products” as before the complaint was filed. The Board rejected that argument, finding that at least some of the claims were dismissed with prejudice, and it was LG’s decision to exclude products from its settlement.
The second decision, Westlake Services LLC v. Credit Acceptance Corp., clarified that estoppel under 35 USC § 325(e) applies on a claim-by-claim basis. Petitioner Westlake, who had been sued by CAC, sought CBM review of all 42 claims of the CAC’s financing method patent. The Board instituted review as to only 19 claims and found them unpatentable under § 101 in its final written decision. Westlake filed a second CBM petition on the same patent seeking review of the remaining 23 claims. CAC sought to terminate the second proceeding, arguing that estoppel under § 325(e)(1) applies to all claims challenged by a petitioner, not just the instituted ones, and that a contrary reading of the statute would allow serial challenges to a patent. The Board rejected that argument, finding that the statute plainly applies to claims that “result in a final written decision.” It noted that its prior final written decision did not in any way incorporate portions of its institution decision relating to claims for which trial was not instituted. The Board therefore denied CAC’s motion, and in its final written decision in the second proceeding, found the remaining 23 claims also unpatentable under § 101.
LG Electronics v. Mondis Technology, No. IPR2015-00937 (PTAB Sept. 17, 2015).
Westlake Services v. Credit Acceptance Corp., No. CBM2014-00176 (PTAB May 14, 2015).