As more and more AIA post-grant review decisions are being
issued, practitioners should be aware that the Patent Trial and
Appeal Board (PTAB) may rule on the validity of the patent at issue
despite settlement by the parties. Unlike ex parte and
inter partes reexamination proceedings, AIA statutory
provisions allow for settlement of post-grant trials before the
Board. However, recent PTAB decisions show the broad discretion
used in determining whether a post-grant proceeding will be
terminated upon settlement between the parties.
In Interthinx, Inc. v. Corelogic Solutions, LLC, the
PTAB issued a final written decision on the validity of a patent,
cancelling the claims of the patent even though a district court
had previously ruled them valid, the parties had reached
settlement, and the patent eventually expired. CBM2012-00007, Paper
No. 58 (PTAB, Jan. 30, 2014).
