In Westlake Services, LLC v. Credit Acceptance Corp., the PTAB denied a Patent Owner’s motion to terminate a CBM proceeding, holding that estoppel under 35 U.S.C. § 325(e)(1) does not apply to claims previously denied institution. CBM2014-00176, Paper 28 (May 14, 2015).
35 U.S.C. § 325(e)(1) states that “[t]he 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) . . . 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.”
The Petitioner in Westlake Services had previously filed a petition for CBM review of claims 1–42 of the patent at issue (“CBM-008”). The Board only instituted for claims 1–9, 13, and 34–42. During the resulting proceeding, the Supreme Court’s Alice decision was issued. Petitioner was denied authorization to file a request for rehearing of the institution decision in light of Alice, but the Board noted that Petitioner was free to file a second CBM petition, which the Petitioner subsequently did for non-instituted claims 10–12 and 14–33.
After the second CBM review was instituted for claims 10–12 and 14–33, the Board issued a Final Written Decision on the prior CBM-008 proceeding, finding claims 1–9, 13, and 34–42 unpatentable under 35 U.S.C. § 101.
Faced with the prospect of having its entire patent invalidated, the Patent Owner filed a motion to terminate the second CBM proceeding. It argued that 35 U.S.C. § 328(a) requires the PTAB to “issue a final written decision with respect to the patentability of any patent claim challenged by the petitioner,” meaning that a final written decision “necessarily incorporates the underlying decision on institution for those claims for which institution is denied.” Thus, the patent owner contended, the Board’s Final Written Decision in CBM-008 applied not only to claims 1–9, 13, and 34–42, but also to non-instituted claims 10–12 and 14–33. Therefore, according to the Patent Owner, the second CBM proceeding was estopped under § 325(e)(1).
The Board disagreed. Noting that prior PTAB decisions had interpreted Sections 328(a) and 325(e) to apply on a claim-by-claim basis, the Board found the CBM-008 Final Written Decision inapplicable to claims 10–12 and 14–33 and denied the patent owner’s motion for termination of the second CBM proceeding under § 325(e)(1).
According to the Board, any concerns about harassment of patent owners through serial petitions are addressed under 35 U.S.C. § 325(d), which grants the Board discretion to reject IPR, PGR, and CBM petitions if they involve “the same or substantially the same prior art or arguments previously presented.”