• Square, Inc. v. Unwired Planet, LLCInstitution denied
  PTAB · Dec 23, 2015 · CBM2015-00148 · APJ James B Arpin · CBM · Institution

  Institution of CBM review of claims 1–4 was denied because § 325(e)(1) estopped Square from pursuing grounds it reasonably could have raised in its earlier CBM petition.

  RulingsInstitution decision

  • PTAB / AIA Trials › §315(e) estoppelEstoppel appliesDenied

    “(emphasis added). As noted above, we issued a Final Written Decision in CBM2014-00156, determining that claims 1–4 of the ’100 patent are unpatentable under 35 U.S.C. § 101. ’156 Dec. 40. Petitioner here was the petitioner in CBM2014-00156, which resulted in a Final Written Decision with respect to claims 1–4. Thus, pursuant to § 325(e)(1), Petitioner cannot “request or maintain” a proceeding before the Office with respect to these claims “on any ground” that Petitioner “raised or reasonably could have raised” in its Petition in CBM2014-00156.” slip op. at 6

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “discovered Orlen earlier, or foreseen our determination that Petitioner had not shown Vazvan’s public availability, we are not persuaded that Petitioner reasonably could not have raised each of the challenges identified above to claims 1–4 of the ’100 patent, based on 35 U.S.C. § 103(a), in its CBM2014- 00156 Petition. Section 325(e)(1) estops Petitioner from requesting or maintaining a proceeding before the Office with respect to the claims at issue in CBM2015-00148 on “any ground that [Petitioner] raised or reasonably could have raised” in CBM2014-00156. Thus, 35 U.S.C. § 325(e)(1) is applicable to the new challenges to claims 1–4 of the ’100 patent. Consequently, Petitioner is estopped from requesting, e.g., petitioning for institution of, or maintaining a proceeding with respect to claims 1–4 of the ’100 patent on the grounds asserted here. See supra Section I.E. Because Petitioner is estopped from requesting or maintaining a proceeding with respect to claims 1–4 based on any ground it “reasonably could have raised” in its earlier petition, we deny covered business method patent review of claims 1–4 of the ’100 patent in the present proceeding.” slip op. at 10

  Discretionary denial
  Patents in suitUS 7,711,100

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