In this decision that it designated as “representative”, the PTAB clarified its stance on the application of estoppel in covered business method (CBM) reviews.
CBM proceedings operate under the rules for Post-Grant Reviews (PGRs), with a few specifically articulated exceptions. One of those exceptions pertains to the estoppel. In further proceedings in district court or in the ITC, estoppel for PGRs attaches to issues that were raised or reasonably could have been raised, whereas estoppel for CBMs attaches only to issues actually raised. In further proceedings in the Patent Office, however, estoppel is exactly the same for PGRs and CBMs, and is set forth in 35 U.S.C. § 325(e)(1). The section states that, in a case “that results in a final written decision,” the Petitioner “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.”
Westlake addresses only estoppel in a CBM proceeding as applied against a Petitioner in further proceedings in the Patent Office. Even with this narrow focus, Westlake still provides important insights, holding as it does that, under the facts presented there, estoppel in a CBM proceeding applies only on a claim-by-claim basis, and not as against the patent as a whole. Estoppel thus does not apply to claims for which institution was denied in a prior proceeding.
Westlake presents a situation where a second CBM proceeding was preceded by a first CBM proceeding in which Petitioner Westlake petitioned to invalidate all of the claims in Credit Acceptance’s patent. In this first CBM proceeding, PTAB instituted on only some of the claims, not all claims as requested by Westlake, and ultimately issued a final written decision finding that the instituted claims were unpatentable under 35 U.S.C. § 101.
In the second CBM proceeding, which is the subject of the Westlake decision, Westlake sought institution on the remaining claims. Credit Acceptance filed a motion to terminate, arguing that estoppel applied to all claims challenged in the first CBM proceeding by Westlake, and not just those claims on which the first proceeding had been instituted.
The PTAB disagreed and held that the final written decision in the first CBM proceeding established estoppel only as to those claims for which the first proceeding had been instituted. In the view of the PTAB, the argument by Credit Acceptance was wrong because under § 325(e)(1), there was no “final written decision” with respect to the claims that were not instituted. In the second CBM proceeding, therefore, Westlake was free to pursue its petition, without hindrance from estoppel.download case