Settlement

35 USC §317 allows parties to terminate an instituted inter partes review (IPR) “unless the Office has decided the merits of the proceeding before the request for termination is filed.”   See 35 U.S.C. §317; see also Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48768 (August 14, 2012)(“the Board expects that a proceeding will terminate after the filing of a settlement agreement, unless the Board has already decided the merits of the proceeding”).  Recent orders from the Patent Trial and Appeal Board (PTAB) reveal that the PTO may refuse to terminate an IPR even though the parties have negotiated a settlement agreement. In particular, that the Office may decide that a settlement agreement between the parties does not terminate the IPR if the proceeding has advanced into the late stages, without a final decision. Thus a final written decision need not be issued for the Office to have “decided the merits of the proceeding.”  See Blackberry Corp., et al v. Mobilemedia Ideas, LLC (IPR2013-00016)(Paper No. 31); Starwood Hotels & Resorts v. LoneStar Wifi, LLC (IPR2014-00101)(Paper No. 11) and Blackberry Corp et al., v. Mobilemedia Ideas, LLC (IPR 2013-0036)(Paper No. 64). The Board’s Orders make clear that settling an IPR early may be just as important as negotiating the terms of the agreement. Read More