United States: AIA Precedential Opinions #2 And #3

The PTAB recently tripled its body of AIA case law with the designation of two decisions as precedential.  Both decisions touch on fundamental and important procedural issues. Neither holding is particularly surprising or changes current practice, but we here at the PTAB Blog are happy to see the PTAB setting clear stakes in the ground.  Parties before the Board will appreciate the extra certainty that the precedential designations provide.

1. The 315(b) time bar runs from service of the first complaint, not subsequent ones

In LG Electronics, Inc. v. Mondis Tech Ltd., IPR2015-00937, Paper 8 (PTAB Sept. 17, 2015), the Board repeated a holding it has made several times before: that the one-year period in which to file a petition runs from service of the first complaint again the Petitioner.  It does not restart upon the filing of a subsequent complaint.  Other Board decisions (not yet made precedential) explain that the barring effect of a complaint is overcome if service of the complaint is nullified in some way, such as by a voluntary dismissal without prejudice.

2. Estoppel attaches on a claim-by-claim basis after a final written decision

In Westlake Services, LLC v. Credit Acceptance Corp., CBM2014-00176, Paper 28 (PTAB May 14, 2015), the Board explained that estoppel under 35 U.S.C. § 325(e)(1) is invoked on a claim-by-claim basis only upon entry of a final written decision.  The Petitioner had filed a first petition attacking all claims of the patent, but trial was not instituted for some of the challenged claims.  The Petitioner's  second petition was instituted as to all of the previously-non-instituted claims.  The Board issued a final written decision in the first trial during pendency of the second trial.  The final decision did not address the non-instituted claims.  Despite Patent Owner's creative arguments to the contrary, the Board explained that the final decision in the first trial did not trigger estoppel in the second trial, because the non-instituted claims were not the subject of the final decision.

Although this decision addresses CBM estoppel under 35 U.S.C. § 325(e)(1), I expect the Board will apply the same reasoning to estoppel issues in IPR cases under 35 U.S.C. § 315(e)(1), because the relevant language is identical between the two provisions.  So in IPR, just as in CBM, estoppel will be evaluated on a claim-by-claim basis only after entry of a final written decision.

The first AIA precedential decision, SecureBuy LLC v. CardinalCommerce Corp., CBM2014-00035, Paper 12 (PTAB Apr. 25, 2014) held that 35 U.S.C. § 325(a)(1) bars institution of a CBM petition filed after the Petitioner had filed a declaratory judgment action for invalidity of the patent.  Again, no surprises there.

These three cases do not encompass the full body of PTAB precedent, but all of the other precedential decisions arose in the context of ex parte  appeals or interferences.  The PTAB website provides a complete list of precedential cases.

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