CBM Estoppel Applies Only to Petitioners and Does Not Bar the PTAB From Addressing Unpatentability Grounds

Following the Board's request for additional briefing, the Board found that the petitioner was estopped under Section 325(e)(1) from asserting unpatentability of certain claims under Section 101, but denied the patent owner's request to file a motion to terminate the proceeding based on that estoppel. "[Patent owner] requests 'leave to file a Motion to Terminate CBM2015-00015 and -00016 with respect to claim 1 in light of this estoppel.' We deny [patent owner] authorization to file a motion to terminate these cases with respect to these claims. Section 325(e)(1) speaks to actions that may not be undertaken by Petitioner (or its real party in interest or privy) – '[t]he Petitioner . . . may not request or maintain a proceeding before the Office'. The statutory provision, however, does not proscribe actions that we may take. . . . There is a public interest in resolving the issues raised by these challenges because the record is fully developed. Moreover, we are making determinations in related cases involving similar issues and argument. Administrative resources will be conserved by resolving all the similar issues at once."

Petition for Covered Business Method Patent Review by Apple Inc., CBM2015-00015 (PTAB November 5, 2015, Order) (Elluru, APJ)