Although their name would suggest that inter partes reviews are proceedings between two private adversaries, the Patent Trial and Appeal Board does have the power to revoke patents even if the requester and the patent owner have settled their dispute and the requester no longer seeks revocation.
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)."
Late last year, in Rubicon Communications, LP v. Lego A/S,1 petitioner Rubicon and patent owner Lego jointly moved the Board to terminate an IPR. The parties made their joint motion before the Board had issued its final written decision, but only a week before the deadline for the decision to be issued. The Board denied the motion.
The Board reasoned that preventing the settlement was in the public interest because, "the public's interest in the status of the challenged claims of each patent is at its peak" shortly before a written decision is entered. The Board also noted that although it had not yet issued its formal final written decision," it had in fact already "decided the merits of the proceeding" before the parties requested termination.
The PTAB has historically been generally more hostile to proposed settlements than one might have expected, and this decision is consistent with that policy. It 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 lesse to settle if the patent owner cannot be assured that settling will safeguard its patent claims from a PTAB decision.
Footnotes
1 Case No. IPR2016-01187.
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