Macauto U.S.A. v. BOS GmbH & KG

IPR2012-00004, Paper No. 21

U.S. Patent No. 6,422,291 B1

Facts

Petitioner and Patent Owner sought to terminate this inter partes review proceeding after arriving to a written settlement agreement calling for dismissal of the district court lawsuit pending in the Western District of New York.

Holding

The parties were authorized to file a joint motion to terminate this proceeding under 35 U.S.C. § 317(a) and 37 C.F.R. § 42.72, but both statutes gave the Board discretion to decide whether to terminate such a proceeding or issue a final written decision.  It is discretionary since the statute provides that “[i]f no petitioner remains in the inter partes review, the Office may terminate the review or proceed to a final written decision under section 318(a).” 35 U.S.C. § 317(a) (emphasis added in original Decision).  The PTAB is also not a party to the settlement.  Both parties must also file a settlement agreement to the Office and the agreement may be kept business confidential by request of either party.

Takeaway

The Board stressed its discretionary ability to terminate an inter partes review proceeding may indicate that it is within the Board’s right to enforce the proceeding as well.  It is worth noting that other Decisions have held that once an oral hearing or final written decision is right around the corner, the Board is less likely to terminate the trial.

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