Faced for the first time with a patent owner unwilling to participate in an inter partes review (IPR), the U.S. Patent and Trademark Office’s (PTO) Patent Trial and Appeal Board (PTAB or Board) permitted the filing of a paper forgoing any further participation in the proceeding, warning that filing such a paper would result in an adverse judgment.  Shire Dev. LLC v. LCS Group, LLC, Case No. IPR2014-00739 (PTAB, Dec. 9, 2014) (Green, APJ).

Accusing petitioner Shire Development of egregiously misrepresenting the prior art in its petition, patent owner LCS Group informed the Board of its intention not to further participate in the IPR. The Board interpreted the statement as a motion for leave to file a “paper to that effect.”  The Board granted the motion for leave, ordering that “if Patent Owner is planning on forgoing any further participation in this proceeding, it should file and is hereby permitted to file a paper to that effect.”

The Board warned patent owner, however, that it would construe the filing of a paper forgoing further participation as an abandonment of the contest. The patent owner’s abandonment of the IPR would be viewed as a request for adverse judgment under 37 C.F.R § 42.73(b)(4), and the Board ordered that if LCS filed the paper forgoing participation, judgment would be entered against it.