Second bites permitted:  PTO estoppel does not apply to claims on which trial was not instituted.

On May 14, 2015, the Board issued a precedential opinion in Westlake Services, LLC v. Credit Acceptance (CBM2014-00176). In that opinion, the Board denied patent owner’s motion to terminate because a petition challenging the same claims was filed (but not instituted on) previously. In denying patent owner’s motion, the Board confirmed that estoppel before the PTO applies on a claim-by-claim basis and does not apply to claims not instituted on nor addressed in a Final Written Decision.  

The Board largely relied on the language of 35 U.S.C. § 325(e), which specifically states that estoppel is invoked as to “a claim in a patent” that “results in a final written decision.” The patent owner’s complaints of harassment from multiple petitions are best addressed, the Board wrote, by its discretion under Section 325(d) to “take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.”

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