Settlement Prior to Trial Institution May Not Require Filing of Settlement Documents

Back in 2015, I pointed out that an opinion of the Federal Circuit called into question the PTAB’s practice of requiring settlement documents to terminate an AIA trial preliminary proceeding. I reasoned that as the Federal Circuit interpreted “proceeding” as written in the AIA statutes as not including a preliminary proceeding in Intellectual Ventures II LLC v. JPMorgan Chase & Co. (here), that this statutory construction could impact pre-institution, settlement procedures.

All these years later, the Board has now been asked to consider the issue.
Continue Reading PTAB Changes Settlement Requirements?

Settlement by Amendment Scenario Thwarted in PTAB Rehearing Reversal

Last March, I explained the strange scenario playing out in ZTE USA Inc., & LG Electronics Inc. v. Cywee Group LTD. (IPR2019-00143).  In ZTE, the original petitioner was joined upon institution by a second petitioner.  As is often the case, the joined petitioners were competitors.  (A joined petitioner takes an understudy role in AIA trial proceedings, absent a settlement between the original petitioner and the patent owner).

Rather than settle, the original petitioner in ZTE decided not to oppose the Patent Owner’s amended claims, or for that matter, even request oral argument.  And, given that the original petitioner was at least still present in the proceeding, the PTAB refused to allow the second petitioner to step in and oppose the amended claims. My previous post pointed out that this was bad policy that could lead to anticompetitive behavior in joinder scenarios.

Last Friday, the PTAB reconsidered its initial decision, and in the wake of Hunting Titan, reversed its earlier decision to allow the amendment opposition of the second petitioner.
Continue Reading PTAB Allows Joined Party to Oppose Amendment in Place of Original Petitioner