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, Case Nos. IPR2014-01040; -01127 (PTAB, Oct. 24, 2014) (Elluru, APJ).

In the initial order, the PTAB reminded the parties that, while the PTAB “expects that a proceeding will terminate after the filing of a settlement agreement,” the PTAB “is not a party to the settlement, and may independently identify any question of patentability.”  The PTAB then denied, without prejudice, the joint motions to terminate for failing to provide the information listed above, and authorized the parties to re-file corrected joint motions.

The parties’ supplemental joint motions to terminate explained that termination was appropriate because (1) the PTAB had not decided the merits of the proceedings; (2) the petitioner would not participate in the inter partes review proceedings if they were not terminated; (3) no dispute remained between the patent owner and petitioner involving the relevant patents; (4) there were no other proceedings related to the challenged patents; (5) and, because the proceedings were at a very early stage, termination promotes the congressional goal to establish a more efficient and streamlined patent system that limits unnecessary and counterproductive litigation costs.  In consideration of the circumstances, the PTAB granted the parties’ joint motions to terminate.