PTAB Designates Two America Invents Act Review Decisions as Precedential

Saul Ewing LLP
Contact

Summary

Recently, the Patent Trial and Appeal Board (PTAB) designated two America Invents Act (AIA) review decisions as precedential: LG Electronics, Inc. v. Mondis Technology, Ltd. and Westlake Services, LLC v. Credit Acceptance Corp. The two decisions mark the second and third AIA review decisions that the PTAB has designated as precedential. Given the new AIA statutory framework and role that the PTAB will often play as the forum of first impression in construing that framework, clients should keep an eye out for forthcoming PTAB decisions.    

Every year, the PTAB enters thousands of opinions. PTAB opinions are designated as routine, informative, or precedential. Of these designations, only a precedential decision is binding authority on the PTAB, unless it is overcome by subsequent binding authority (e.g., a decision of the U.S. Supreme Court or Federal Circuit Court of Appeals, or legislation).
      
Currently, less than 0.01 percent of all PTAB decisions have been designated as precedential. Among AIA review decisions, only three have been designated as precedential: (1) SecureBuy, LLC v. Cardinal Commerce Corp.; (2) LG Electronics, Inc. v. Mondis Technology, Ltd.; and (3) Westlake Services, LLC v. Credit Acceptance Corp.

The SecureBuy case, the first AIA review decision designated as precedential, clarified an actual or apparent ambiguity between the provisions of 35 U.S.C. § 325(a)(1) and 37 CFR. § 42.300(a) and 42.201(a). The PTAB clarified that, based on the provisions of 35 U.S.C. § 321(c), a “covered business method” review proceeding is subject to § 325(a)(1)’s bar on filing a petition for post-grant review of a patent if the petitioner had filed a civil action challenging validity of a claim of the patent prior to filing the petition.

More recently, in the LG Electronics case, the PTAB adopted a literal construction of the provisions of § 35 U.S.C. 315(b). Section 315(b) bars a petitioner from requesting an inter partes review (IPR) of a patent if the petition is filed more than one year after the date on which the petitioner is served with a complaint alleging infringement of the patent. The PTAB construed § 315(b) to bar an IPR request if any complaint alleging infringement was filed prior to one year before the filing of the petition, generally without regard as to whether subsequent complaints were served at a later date that would fall within the one-year window.

In the Westlake Services case, the PTAB dealt with the construction of 35 U.S.C. § 325(e)(1). Section 325(e)(1) provides 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 PTAB clarified that a decision not to institute trial on a subset of claims of a patent was not a “final written decision” on the patentability of those claims that triggered estoppel under 35 U.S.C. § 325(e)(1).

View Document(s):

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Saul Ewing LLP | Attorney Advertising

Written by:

Saul Ewing LLP
Contact
more
less

Saul Ewing LLP on:

Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Custom Email Digest
- hide
- hide