Hurry Up And Settle! Settling Early To Avoid PTAB Refusal To Terminate IPR

In an inter partes review ("IPR") proceeding, a petitioner challenging a patent and the patent owner often reach settlement before a final decision has been reached.  Out of the 117 IPR cases that have settled to date, 45% settled even before institution of the IPR, and 55% settled after institution of the IPR trial.

If an IPR has already been instituted, the parties must request that the Patent Trial and Appeal Board ("PTAB") terminate the proceeding under 35 U.S.C. § 317, which provides that an IPR "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."  The parties must file a written settlement agreement with the PTAB under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b), along with a request to treat the agreement as business confidential information if necessary.  See 37 C.F.R. § 42.74(c).