Shearman & Sterling LLP | IP Blog | PTAB Denies Joint Motion To Terminate Due To Settlement Sought Just Prior To Final Written Decision Deadline <br >  
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  • PTAB Denies Joint Motion To Terminate Due To Settlement Sought Just Prior To Final Written Decision Deadline 

    On December 14, 2017, a panel of Administrative Patent Judges (Judges Scott Daniels, Neil Powell, and Timothy Goodson) of the Patent Trial and Appeal Board (PTAB) for the United States Patent and Trademark Office denied the parties’ joint motion to terminate an inter partes review (IPR) proceeding due to settlement.  Rubicon Commc’ns, LP v. Lego A/S, IPR case no. IPR2016-01187.

    Rubicon petitioned the PTAB to review the validity of certain claims of a patent owned by Lego A/S.  The PTAB granted Rubicon’s request, and instituted an IPR proceeding.  Less than a week before the PTAB’s statutory deadline to issue its final written decision, the parties settled their dispute and jointly requested, pursuant to 35 U.S.C. § 317(a), that the PTAB terminate the proceeding before issuing its final written decision. 

    35 U.S.C. § 317(a) provides that “[a]n inter partes review instituted under this chapter shall be terminated with respect to any petitioner upon the joint request of the petitioner and the patent owner, unless the Office has decided the merits of the proceeding before the request for termination is filed. . . . If no petitioner remains in the inter partes review, the Office may terminate the review or proceed to a final written decision under section 318(a).”

    The PTAB denied the request, for two reasons.  First, the parties waited until “very near the conclusion of the proceeding” at which point “the public’s interest in the status of the challenged claims of each patent is at its peak.”  Second, although it had not yet issued its formal final written decision,” the PTAB had rendered its final “decided the merits of the proceeding” before the parties requested termination. 

    This decision is another in a chain of opinions illustrating that, the longer the parties wait to seek termination, the less likely the PTAB will terminate the proceeding—even if, as in this case, the request is made before the PTAB issues a final written decision.  Paradoxically, such decisions may make IPR settlements less likely; there is less point to settlement if the patent owner cannot be assured that settling will safeguard its patent claims from a PTAB decision.