Tagged with Precedential Opinion

PTO Designates Precedential its Athena Automation Decision on Assignor Estoppel in IPR

Author: Jason E. Stach
Editor: James D. Stein 

The PTAB designated as precedential its Institution Decision in Athena Automation Ltd. v. Husky Injection Moldings Systems Ltd., IPR2013-00290, Paper No. 18 (Oct. 25, 2013). According to the Patent Office’s message announcing this new precedential designation, “[t]his decision determines that the doctrine of assignor estoppel is not an exception to 35 U.S.C. § 311(a), which allows ‘a person who is not the owner of a patent’ to file a petition for inter partes review.” Continue reading

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PTO Designates New Precedential Opinions on Final Written Decision Estoppel and the One-Year Time Bar for IPR

Author: Shaton C. Menzie
Editor: James D. Stein

On Wednesday, January 13, 2016, the PTAB designated two new “precedential” decisions, providing authority on issues of estoppel stemming from a final written decision and the one-year deadline for IPR filings:

  • Westlake Services, LLC v. Credit Acceptance Corp., CBM2014-00176 (Paper. No. 28) (May 14, 2015)
  • LG Electronics v. Mondis Technology, Ltd., IPR2015-00937 (Paper No. 8) (Sept. 17, 2015)

In Westlake, the petitioner filed a petition (CBM2014-00008) challenging all claims of a patent, but the Board only instituted and rendered a final written decision on some of the claims. When Westlake filed a second petition (CBM2014-00176) challenging the subset of the claims for which the Board did not institute review, Credit Acceptance argued that the petition was barred under 35 U.S.C. § 325(e)(1) because “th[e] [earlier institution and final written] decisions [together] resolved the Petitioner’s challenges to all claims.” Paper 25 at 2-3. The Board disagreed, finding “that estoppel is applied on a claim-by-claim basis” because, “[b]y its terms, estoppel is invoked under Section 325(e)(1) as to ‘a claim in a patent’ that ‘results in a final written decision under’ 35 U.S.C. § 328(a).” Paper No. 28 at 5.

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