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ARTICLE · 13 APRIL 2023

How Long Is Too Long To Wait To Settle?

Jones Day
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An IPR "shall be terminated with respect to any petitioner upon the joint request of the petitioner and patent owner, unless the Office has decided the merits of the proceeding before the request for termination...

United StatesIntellectual Property
Susan Gerber
Susan Gerber
Matthew Johnson
Matthew Johnson
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An IPR "shall be terminated with respect to any petitioner upon the joint request of the petitioner and patent owner, unless the Office has decided the merits of the proceeding before the request for termination is filed." 35 U.S.C. § 316(a). We have previously written about the situation where a request to terminate was denied because the PTAB had already decided the merits of the proceeding. Be Advised: Settlement Does Not Necessarily End An IPR Or PGR. This begs the question: How close to the Final Written Decision deadline can parties wait before settling a case? The PTAB's decision in Arnold & Richter Cine Technik GmbH & Co. Betriebs KG v. Rotolight Ltd., IPR2021-01496, IPR2021-01497, IPR2021-01498, and IPR2022-00099, Paper No. 40 (P.T.A.B. Jan. 30, 2023), provides another data point toward answering this question.

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