The Patent Trial and Appeal Board ("PTAB") recently
designated as precedential its prior decisions in LG
Electronics, Inc. v. Mondis Tech, Ltd., Case IPR2015-00937
(Sept. 17, 2015) and Westlake Services, LLC v. Credit
Acceptance Corp., Case CBM2014-00176 (May 14, 2015). These
decisions warrant consideration before filing proceedings before
PTAB.
LG Electronics, Inc. v. Mondis Tech, Ltd. – The
Impact of Prior Litigation and Settlements on Subsequent PTAB
Requests
In LG Electronics v. Mondis, petitioner LGE was sued twice
on the same patent. In the first action (served January, 2008) the
claims directed to existing products were eventually dismissed with
prejudice while the claims directed to "unreleased
products" were dismissed without prejudice. In October 2014,
Mondis served a second complaint asserting infringement of the same
patent, but directed at the previously "unreleased
products". In March 2015, LGE filed a request for inter
partes review ("IPR").
The PTAB found that LGE's request for inter partes review
was time barred because it was filed more than one year after
LGE was served in the first action, citing 35 U.S.C.
§ 315(b). The PTAB distinguished its decision in Oracle
Corp. v. Click-to-Call Techs., LP, Case IPR2013-00312 because
in Oracle, the entire complaint was dismissed without
prejudice. Instead, the PTAB likened the LGE petition to the
facts in Microsoft Corp. v. Virnetx Inc., Case
IPR2014-00401, where a prior complaint acted as a bar to filing a
petition because claims had been dismissed with
prejudice. Significantly, the 2008 LGE-Mondis settlement
agreement barred claims against the existing products. Thus,
unlike Oracle, the legal position of the parties was not the same
as if the complaint had never been brought.
In view of this precedential PTAB decision, the accused infringer
should evaluate the impact of the settlement on potential
future PTAB proceedings.
Westlake Services, LLC v. Credit Acceptance Corp. –
The Estoppel Effect of Prior PTAB Proceedings
In Westlake v. Credit Acceptance, the PTAB confirmed that
estoppel resulting from a final decision is applied on a
claim-by-claim basis.
In Westlake v. Credit Acceptance, petitioner Westlake
previously petitioned for a covered business method review of all
claims in Credit Acceptance's patent. The PTAB instituted
review of 19 out of 42 claims, and subsequently ruled upon their
patentability in a final decision. When Westlake later
challenged the remaining claims in a subsequent CBMR petition,
Credit Acceptance claimed that Westlake was estopped under 35
U.S.C. § 325(e)(1) by the prior final decision and that the
second petition should be terminated. In denying the motion to
terminate, the PTAB confirmed that 35 U.S.C. §§ 328(a)
and 325(e) are applied on a claim-by-claim basis. Because the prior
final written decision only ruled upon the patentability of the
instituted claims, Westlake was not estopped from bringing the
second petition against the previously uninstituted claims.
In view of this precedential opinion, a petitioner should consider
whether all claims need to be challenged in a CBMR.
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