Friday, June 09, 2017

CAFC affirms PTAB in Credit Acceptance case

The outcome:

Credit Acceptance Corp. (“CAC”) appeals the final
written decision of the Patent Trial and Appeal Board
(“Board”) in a Covered Business Method (“CBM”) review
proceeding. The Board determined that claims 10–12 and
14–33 of CAC’s U.S. Patent No. 6,950,807 B2 (“the ’807
patent”) are directed to patent-ineligible subject matter
under 35 U.S.C. § 101. CAC appeals the Board’s determination
that the petitioner, Westlake Services, LLC
(“Westlake”), was not estopped from maintaining CBM
review of those claims under 35 U.S.C. § 325(e)(1). CAC
also appeals the Board’s § 101 determination. Because we
agree with the Board that Westlake was not estopped
from maintaining CBM review of those claims and that
the challenged claims are unpatentable under § 101, we

Of note:

As a threshold matter, both Westlake and the PTO
argue that a determination by the Board on 35 U.S.C.
§ 325(e)(1) is nonappealable, and therefore, this court has
no jurisdiction to review the Board’s estoppel determination.
We disagree.


The estoppel provision at issue here, § 325(e)(1) (like
the comparable IPR provision, § 315(e)(1)), is distinct
from the issues addressed in Cuozzo. Specifically,
§ 325(e)(1) does not refer to “institution” decisions and in
fact is not limited to institution decisions. While the
appeal bar precludes review of a “request” for proceedings,
which might be analogized to an institution decision, on
its face, § 325(e)(1) contemplates that estoppel governs at
any stage of a subsequent proceeding before the PTO—its
application is not limited to the institution stage.

Here, the Board did issue a final written decision with
respect to patentability, and CAC appeals that decision.
Because the statute prohibits an estopped petitioner from
“maintain[ing]” a proceeding, the Board necessarily found
that Westlake was not estopped when it issued its final
written decision. See 35 U.S.C. § 325(e)(1).
We conclude that we have jurisdiction to review the
CAC’s estoppel argument regarding 35 U.S.C. § 325(e)(1).

As to the appellant:

CAC’s argument is foreclosed by our decision in Synopsys,
which interpreted statutory language in the IPR
context that is identical to language in the provisions
governing CBM proceedings. As the Synopsys court
recognized, “[t]he validity of claims for which the Board
did not institute inter partes review can still be litigated
in district court,” and this caused “no inconsistency” with
the AIA estoppel provisions. 814 F.3d at 1316; see also 35
U.S.C. § 315(e)(2) (IPR estoppel provision applicable to
subsequent civil actions). It equally follows that there is
no estoppel in future PTO proceedings.

In Synopsys, we held that, under the statute and the
PTO’s regulations, the Board may institute an IPR on a
claim-by-claim basis, such that “the Board can pick and
choose among the claims in the decision to institute.” 814
F.3d at 1316. The court also explained that 35 U.S.C.
§ 318(a) (which is identical in all relevant aspects to
§ 328(a)) “only requires the Board to address claims as to
which review was granted” in a final written decision.
814 F.3d at 1317. Therefore, a final written decision on
instituted claims is not a final determination on the
patentability of non-instituted claims. See 814 F.3d at

Of statutory construction:

The holdings in Synopsys and Shaw with respect to
IPRs apply to the PGR statutes and regulations as well
since the PGR provisions contain identical language.
Compare 35 U.S.C. §§ 314(a), 315(e)(1), and 37 C.F.R.
§ 42.108, with 35 U.S.C. §§ 324(a), 325(e)(1), and 37
C.F.R. § 42.208. The IPR statutes and PGR statutes (as
adopted into the CBM framework) were all enacted simultaneously
in the AIA. “[T]he normal rule of statutory
interpretation [is] that identical words used in different
parts of the same statute are generally presumed to have
the same meaning.” IBP, Inc. v. Alvarez, 546 U.S. 21, 34
(2005). To be sure, despite the parallel nature of the IPR
and CBM provisions, there are significant structural
differences in the overall schemes, but none of these
differences is relevant here. Accordingly, we adopt the
reasoning and conclusions of our IPR cases.


Post a Comment

<< Home