Int’l Business Machines Corp. v. Financial Systems Tech Pty. Ltd.


IPR2013-00078 Paper No. 11

U.S. Patent No. RE40,526 (reissue)

[Board Grants Termination of IPR in Preliminary Stage]

Facts

A conference call was held on February 8, 2013.  The Patent Owner Preliminary Response was due March 17, 2013.  On February 8, 2013, the Petitioner and Patent Owner filed their settlement agreement, which contemplated dismissal of the pending district court proceeding and this inter partes review proceeding, along with a joint request to treat the agreement as business confidential and kept separate from the involved patent files as well as a joint motion to terminate the proceeding pursuant to 35 U.S.C. § 317.

Holding

The Board held that because the trial was yet to be instituted in this proceeding, it was appropriate to enter the judgment to terminate the proceeding while in the preliminary proceeding stage.

Takeaway

A joint motion to terminate an inter partes review proceeding as a result of settlement is more likely to be granted if the trial has not been instituted yet.  Still, the Board has discretion whether to terminate a proceeding after institution.

 

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