by Marin Cionca and Iris Kim

In January 2016, the Patent Trial and Appeal Board (PTAB or the Board) marked two of their 2015 decisions as precedential. LG Electronics, Inc. v. Mondis Tech Ltd.,(IPR2015-00937, Paper 8, PTAB, Sept. 17, 2015) and Westlake Services, LLC v. Credit Acceptance Corp., (CBM2014-00176, Paper 28, PTAB, May 14, 2015) are the second and third America Invents Act (AIA) review decisions that the Board designated as precedential, the first AIA precedential decision being SecureBuy, LLC v. CardinalCommerce Corp. (CBM 2014-00035, PTAB, Apr. 25, 2014). The majority of decisions by the Board are routine, and others may be designated as informative or precedential. A precedential decision is significant in that it is binding authority on the Board unless overcome by a subsequent binding authority, for instance, a decision by the U.S. Supreme Court or the Federal Circuit Court of Appeals. 

LG Electronics, Inc. v. Mondis Tech Ltd. concerns the 12 month window in complaint filings, namely, the interpretation of “served with a complaint” with regards to the one-year time bar that is set forth by 35 U.S.C. 315(b). This time bar prevents a petitioner from requesting an inter partes review of a patent if they would be filing after one year from the date they are served with a complaint alleging infringement of that patent. When multiple complaint filings have occurred, the interpretation of 35 U.S.C. 315(b) could become complex. The Board interpreted in LG Electronics that there is to be a bar even if subsequent complaints were served within that 12 month window of time.

Westlake Services, LLC v. Credit Acceptance Corp. concerns the interpretation of the estoppel provision set forth in 35 U.S.C. 325(e)(1). Claims that were denied trial do not trigger 35 U.S.C. 325(e)(1) estoppel where other claims in the patent move forward through trial. 35 U.S.C. 325(e)(1) states that a “petitioner in a post-grant review of a claim in a patent… 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 Board made a clarification in Westlake Services that the decision not to proceed to trial on a subset of claims of a patent does not constitute a “final written decision” on the patentability of the claims that triggered the 35 U.S.C. 325(e)(1) estoppel, and estoppel is to be “applied on a claim-by-claim basis.”