Takeaway: Settlement negotiations may not provide sufficient cause to extend time for filing the preliminary response in light of the fact that the filing of a preliminary response is optional and a patent owner may waive such a filing if doing so would facilitate settlement.
In its Order, the Board denied the parties’ stipulated motion to extend time for Patent Owner’s preliminary response to the Petition. Patent Owner had emailed the Board on behalf of both parties “seeking a two-month extension of the filing deadline for Patent Owner’s preliminary response, in light of ongoing settlement negotiations.” The parties further agreed “to expedite the proceedings if inter partes review is instituted.” Continue reading
Takeaway: If a final written decision has already been rendered finding all challenged claims unpatentable, it is unlikely that the Board will vacate the decision on the basis of a subsequent settlement by the parties.
In its Order, the Board denied Patent Owner’s request for authorization to file a Motion to Vacate the Final Written Decision and to Terminate the Proceeding After the Final Written Decision Has Been Vacated. The Board rendered a Final Written Decision finding unpatentable all challenged claims of the ’413 Patent. Subsequently, the parties filed a Joint Motion to File Settlement Agreement as Confidential Business Information, and Patent Owner requested authorization to file the Motion to Vacate. Patent Owner based its request on the fact that Petitioner has abandoned the proceeding by agreeing not to participate in any subsequent appeal. Continue reading
Takeaway: If the parties are requesting to modify due dates 3-7, they must show good cause for modification, which cannot be based upon speculation of future events.
In its Order, the Board denied-in-part and dismissed-in-part the parties’ Joint Motion to Modify Schedule. The parties requested to modify Due Dates 3-7 in the Revised Scheduling Order by six months to one year in view of a merger agreement between the parties that should close sometime in 2015 after FTC approval. The parties also requested an extension of time to complete the trial under 35 U.S.C. § 326(a)(11). The Board issued an Order requiring additional information from the parties, and a Response was submitted. In the Response, the parties stated that the FTC extended its initial waiting period for at least six month, pushing the closure of the merger for at least six months. Additionally, if the FTC does not approve the merger, then the FTC may file a lawsuit to keep the merger agreement from closing. Therefore, the parties may need an extension of multiple years. Continue reading
Takeaway: A joint motion to terminate the proceedings must be accompanied by a true, un-redacted copy of the settlement agreement between the parties.
In its Order, the Board denied without prejudice the parties’ Motions to Terminate the Proceedings pursuant to a settlement for failing to include all the information that must accompany such motions. Continue reading