Order Denying Motions to Terminate IPR2014-00132, 00133


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.

The Board provided guidance to the parties for properly filing a motion to terminate. The joint motion should include “(1) the identity of all parties in any related district court case involving the patent at issue in the proceeding sought to be terminated; (2) the current status of each such related case with respect to each party to the litigation; and (3) the case numbers of any pending related inter partes review proceedings.”

Further, the joint motion “must be accompanied by a true copy of the parties’ settlement agreement, as required by 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b).” A redacted version does not qualify as a “true copy.”

Parties that wish to have the settlement agreement treated as confidential, as the parties desired in the instant proceeding, must electronically file the confidential agreement in the Patent Review Processing System (PRPS) as an exhibit. The parties were directed to the Board’s website, and particularly FAQ G2, for guidance on filing the settlement agreement as confidential (http://www.uspto.gov/ip/boards/bpai/prps.jsp).

Aptwater, Inc. v. Thinkvillage-Kerfoot, LLC, IPR2014-00132, IPR2014-00133
Paper 17: Order Denying Without Prejudice Motions to Terminate the Proceedings
Dated: June 10, 2014
Patents: 7,033,492 B2 and 7,537,706 B2
Before: Grace Karaffa Obermann, Michael J. Fitzpatrick, and Sheridan K. Snedden Written by: Obermann