Addressing a motion to terminate post-grant review based on a final written decision in another proceeding directed to some of the challenged claims, the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB) denied the motion, finding that the petitioner was not estopped from maintaining review of claims that were not previously instituted nor addressed in the final written decision. Westlake Services, LLC v. Credit Acceptance Corp., Case No. CBM2015-00176 (PTAB, May 14, 2015) (McKone, APJ).

After institution of a covered business method (CBM) review for only some of the challenge claims in the subject patent, the Board denied the petitioner’s request for rehearing but granted leave to file a second petition based on a newly issued decision from the Supreme Court. A second proceeding was instituted. After a final written opinion issued in the first proceeding, the patent owner was granted leave to file a motion to terminate the second proceeding based on § 325(e)(1); i.e., that the petitioner was estopped from “maintain[ing] a proceeding with respect to any claim [that results in a final written decision] on any ground that the petitioner raised or could have raised during that post-grant review.” In its motion, the patent owner took the position that, under the Board’s rules, estoppel applies to all claims challenged by a petitioner—even claims for which the Board did not institute a trial.

The Board, however, found that estoppel should be applied on a claim-by-claim basis, and thus § 325(e)(1) should be interpreted to apply to “a claim in a patent” that “results in a final written decision.” The patent claims that were challenged during the first proceeding, but for which trial was not instituted, are not claims that resulted in a final written decision. Thus, the Board denied patent owner’s motion to terminate the proceedings.

The Board also denied patent owner authorization to reargue the impact of allowing serial petitions—an issue already considered in its decision to institute proceedings—noting that the patent owner did not seek reconsideration of the institution decision.

The Board marked its decision in the instant case as “precedential,” meaning that future Board judges must adhere to the ruling in this case until and unless it is “overcome by subsequent binding authority.”