More than 800 inter partes reviews (“IPRs”) have been filed under the new U.S. Patent Office trial proceedings; however, a smaller number of patents have been subject to IPR proceedings. A growing trend in inter partes review proceedings is for the same Petitioner to file more than one IPR for a single patent. That is, many patents have been subject to multiple IPR proceedings—some patents have even been subject to four IPR petitions by the same Petitioner.
IPR Claim Amendment Limitations Apply to Covered Business Method Patent Review and Amendments for 35 U.S.C. §101 Purposes
As discussed previously, the Board has imposed significant limitations on a Patent Owner’s ability to amend a claim in inter partes review. See Idle Free Systems, Inc. v. Bergstrom (IPR2012-0027 Paper 26). These limitations include a requirement for a Patent Owner to show patentability of the proposed amendments over the prior art. Idle Free at 7-8. Recently, the Board has imposed these limitations to amendments made solely for 35 U.S.C. § 101 purposes in a CBM.
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.
PTAB Relies on the Patent Owner’s Failure to Establish General Patentability in Denying Motion to Amend
In Idle Free, the Board relied on the stringent requirements for establishing “general patentability” and denied Bergstrom’s renewed motion to amend the claims. The Board’s decision exemplifies the strict nature of these proceedings by denying Bergstrom’s motion to amend despite agreeing that the proposed claims distinguish over the art of record.