Westlake Services, LLC. v. Credit Acceptance Corp., Case CBM2014-00176 (May 14, 2015) (Paper 28)

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The Board applies final written decision estoppel on a claim-by-claim basis; estoppel under § 325(e) (or § 315(e)) does not apply to claims that are challenged in a petition but denied institution.

Summary  (Precedential) :

Petitioner Westlake Services LLC (“Westlake”) challenged U.S. Patent No. 6,950,807 (“the ‘807 Patent”) in two separate CBM petitions. The first petition challenged claims 1-42 of the ’807 Patent. The Board instituted CBM for claims 1-9, 13, and 34-42 and denied institution with respect to claims 10-12 and 14-33. The Board issued a final written decision holding that claims 1-9, 13, and 34-42 were unpatentable.

Westlake subsequently filed a second petition challenging claims 10-12 and 14-33 of the ‘807 Patent. After the Board instituted CBM review, the Patent Owner moved to terminate the CBM under 35 U.S.C. § 325(e)(1). Patent Owner argued that 35 U.S.C. § 325(e)(1) estoppel applies to all claims challenged in the original petition – even claims for which the Board does not institute trial. The Patent Owner reasoned that a final written decision necessarily incorporates the underlying decision on institution for all petitioned claims. The Board disagreed, finding that § 325(e)(1) estoppel is applied on a claim-by-claim basis. Accordingly, the Board denied the Patent Owner’s motion to terminate.

[Although this decision deals with CBMs, the holding also applies to IPRs]

David Tseng

Dave represents clients in intellectual property litigation before various federal courts, including the U.S. District Court for the Central District of California, Eastern District of Texas, District of Delaware, and before the International Trade Commission. He has engaged in litigation on a variety of technologies, such as plastic molding techniques, internet lead generation, audio/video encoding circuits, flash memory devices, web-based gaming, nutritional supplement manufacturing processes, consumer mechanical devices, telecommunications standards (3G/UMTS) as well as mobile handsets and handset operations.

Clint Conner

Clint’s practice focuses on intellectual property with an emphasis on patent litigation, inter partes reviews, and patent enforcement strategies. Although he has remained focused on U.S. intellectual property law throughout his career, he brings an international perspective, having spent nearly five years representing companies in U.S. patent litigation while living and working in Tokyo. Before attending law school, Clint was an engineer for three years with Lucent Technologies’ Bell Labs (now Alcatel-Lucent).