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]