Inter partes review proceedings have become a popular mechanism for defendants to challenge the validity of a patent that is asserted in a district court litigation. Because IPRs typically move more quickly than district court litigation and can focus parties on validity issues early in a dispute, IPRs may encourage parties to consider early settlement of district court litigation.
35 U.S.C. § 317, enacted with the America Invents Act, provides that parties can jointly move to terminate post-grant proceedings. The circumstance when such a request would most often occur is after settling copending litigation. The ability to terminate a post grant proceeding is in contrast to reexamination proceedings, which could only be terminated in certain limited circumstances. Procedurally, the parties must first move for and obtain permission from the Patent Trial and Appeal Board before filing a motion to terminate. Under 35 U.S.C. § 317(b), the parties must submit a copy of settlement agreement, which can be filed under seal per 37 C.F.R. § 42.74(c).
Please click here to continue reading the full text of this article
Originally published by BNA's Patent, Trademark & Copyright Journal, 2016
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
