Westlake Services, LLC v. Credit Acceptance Corp.

 

Paper 28, May 14, 2015

CBM2014-00176 (Patent 6,950,807)

[The Board applies estoppel provision on a claim by claim basis.

The Board will take into consideration a change in law, which affects the grounds for the previous denial in its decision to institute the proceedings]

FACTS

Patent Owner, Credit Acceptance Corp., requested authorization to file a motion to terminate proceedings pursuant to 35 U.S.C. § 325(d) and (e)(1) in light of the final written decision in the previous proceedings between the same parties and concerning the same patent. In these previous proceedings, the Board reached its final decision on patentability with respect to some patent claims but declined to institute review with respect to others.

HOLDING

The Boards denied Patent Owner’s Motion to Terminate. 35 U.S.C. § 325(e)(1) provides that petitioner may not request or maintain a proceeding before the Office with respect to a claim on any ground that the petitioner raised or reasonably could have raised in any prior post-grant review where a final decision was reached. The Board held that this provision applies to each challenged patent claim individually. Thus, petitioner is not estopped from challenging a claim with respect to which an institution of action was previously denied in different proceedings, notwithstanding the fact that a final decision had been reached with respect to other patent claims in those proceedings.

The Board noted that in denying Motion to Terminate, it considered a change in law effectuated by a Supreme Court decision vacating precedent on which the Board relied in denying the institution of review in the previous proceeding involving the challenged claims.

TAKEAWAY

The Board applies estoppel provision 35 U.S.C. § 325(e)(1) on a claim by claim basis. This provision does not preclude the petitioner from challenging claims with respect to which the Board previously declined to institute review. In exercising its discretion under 35 U.S.C. § 325(d), the Board may consider a change in law if that change affects the grounds on which the Board relied for its previous denial of review.

 

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