Patent Trial and Appeal Board Newly Designates Decisions as Precedential

The Patent Trial and Appeal Board of the U.S. Patent Office has newly designated its opinion in LG Elecs., Inc. v. Mondis Tech. LTD., No. IPR2015-00937, 2015 Pat. App. LEXIS 10261 (P.T.A.B. Sept. 15, 2015) as precedential. Mondis had asserted its U.S. Patent No. 6,513,088 against LG and other electronics manufacturers, and claims of the ’088 Patent had survived previous ex parte and inter partes reexamination proceedings. LG had requested inter partes review of the ’088 Patent and other Mondis patents.

The Board held that inter partes review of the ’088 Patent was time-barred by 35 U.S.C. § 315(b), which states that “[a]n inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner … is served with a complaint alleging infringement of the patent.” Mondis had originally served LG with a complaint alleging infringement of the ’088 Patent on January 11, 2008, but that complaint was dismissed with prejudice with respect to certain LG products and without prejudice with respect to other LG products. Mondis then served LG with another complaint alleging infringement of the ’088 Patent on October 16, 2014.

LG argued that the petition was timely because the statute does not specify whether a subsequent complaint restarts the timeline for requesting review, and the petition was filed within one year after the date of service of at least one of the complaints it received. The Board, however, declined to adopt an expansive view of the statute’s language that would effectively restart the deadline any time a new complaint was served. Rather, any complaint alleging infringement of the patent appears to initiate the one-year period during which inter partes review may be requested, after which inter partes review is unavailable. Accused infringers considering seeking inter partes review should consult with expert counsel early to ensure that an appropriate petition can be filed before the one-year deadline if they decide to pursue that option.

In addition, the Board newly designated its opinion in Westlake Servs., LLC v. Credit Acceptance Corp., No. CBM2014-00176, 2015 Pat. App. LEXIS 7150 (P.T.A.B. May 14, 2015) as precedential. Westlake had previously petitioned for covered-business-method review of all the claims of the challenged patent, and the Board only instituted review for some of the challenged claims. After some significant decisions relating to subject-matter eligibility had issued, Westlake again petitioned for covered-business-method review of the claims for which review had not previously been instituted.

Credit Acceptance argued that the estoppel provisions of 35 U.S.C. § 325(e) prevented Westlake from seeking review of the challenged claims because the final written decision from the previous covered-business-method review necessarily incorporated the decision not to institute review of the same claims. The Board rejected this argument, holding that the estoppel provisions apply on a claim-by-claim basis, and that estoppel did not apply because there was no final written decision issued for the challenged claims. Patent owners who have successfully argued that a covered-business-method review or inter partes review should not be instituted should consider that the unreviewed claims may still be eligible for review under post-grant proceedings before the Board, particularly in instances where significant decisions affecting the law have issued.