Joint Motions To Terminate Pre-Institution IPRs Should Explain Why Termination Is Appropriate

RPC Formatec GMBH v. Trudell Medical Int'l

Addressing what information "should" be in a joint motion to terminate proceedings at the pre-institution stage, the U.S. Patent and Trademark Office Patent Trial and Appeal Board (PTAB) denied without prejudice the parties' joint motions to terminate, authorizing the parties to re-file corrected joint motions, finding the parties' joint motions deficient for failing to include "(1) a brief explanation as to why termination is appropriate; (2) the identity of all parties in any related district court case involving the patents at issue in the proceedings sought to be terminated, (3) the identity of any related proceedings currently before the Office; and (4) the current status of each such related case or proceeding with respect to each party to the case or proceeding."  The PTAB later granted supplemental joint motions based on the additional information provided by the parties.  RPC Formatec GMBH v. Trudell Medical Int'l, C