Post-Grant Patent Blog

PTAB Designates Two Prior Opinions as Precedential
February 29, 2016

The Patent Trial and Appeal Board (PTAB) recently designated as precedential two of its prior decisions in LG Electronics, Inc. v. Mondis Tech, Ltd., Case IPR2015-00937, Paper 8 (Sept. 17, 2015) and Westlake Services, LLC v. Credit Acceptance Corp., Case CBM2014-00176, Paper 28 (May 14, 2015). 

In LG Electronics, the Petitioner had been sued twice on the same patent with complaints served in January 2008 and then again in October 2014.  In the first suit claims directed to existing products were eventually dismissed with prejudice, while claims directed to “unreleased products” were dismissed without prejudice.  The second suit related to the previously “unreleased products.”  Petitioner filed a Petition for inter partes review in March 2015, less than one year after it was served with the complaint in the second suit.

The Board found that Petitioner’s request for inter partes review was time barred pursuant to 35 U.S.C. § 315(b) because it was filed more than one year after it was served in the first suit.  The PTAB distinguished its decision in Oracle Corp. v. Click-to-Call Techs., LP, Case IPR2013-00312 (Paper 40), because in Oracle, the entire complaint was dismissed without prejudice. As such, the legal position of the parties in that case was the same as if the complaint had never been brought.  The same could not be said of the first suit between LG Electronics and Mondis, which dismissed with prejudice claims against the existing products.  Thus, unlike Oracle, the legal position of the parties was not the same as if the 2008 complaint had never been brought.

In Westlake Services, Petitioner had previously petitioned for a covered business method review (CBMPR) of all claims in Patent Owner’s patent. The PTAB instituted review of 19 out of 42 claims, ultimately ruling in favor of their patentability in a final written decision.  Petitioner later challenged the remaining claims in a subsequent CBMPR Petition.  In response, Patent Owner moved to terminate the second Petition on the grounds that Petitioner was estopped under 35 U.S.C. § 325(e)(1) by the prior final decision. The PTAB denied the motion to terminate, confirming that 35 U.S.C. §§ 328(a) and 325(e) are applied on a claim-by-claim basis. Since the prior final written decision only ruled upon the patentability of the claims instituted in that prior proceeding, Petitioner was not estopped from bringing the second petition against the remaining, previously uninstituted claims.

These decisions mark the second and third post-grant review decisions designated by the PTAB as precedential, joining the PTAB’s decision in SecureBuy LLC v. CardinalCommerce Corp., CBM2014-00035, Paper 12 (Apr. 25, 2014).   

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