Three patent cases highlight both the potential advantages and potential limitations of Inter Partes and Covered Business Method strategies before the PTAB.
In the last two weeks the Patent and Trial and Appeal Board (PATB) has further developed jurisprudence regarding Inter Partes Review (IPR) and Covered Business Method (CBM) proceedings before the tribunal. These developments should help parties assess their strategies concerning these new procedures.
Terminating CBM Pursuant to Settlement -
The first development of note related to an order terminating the participation of the petitioner in a CBM proceeding pursuant to settlement. In the case of Interthinx, Inc. v. Corelogic Solutions, LLC, Case CBM 2012-00007, the parties presented the Board with a joint petition to terminate the proceeding based on a settlement. IPR and CBM proceedings — as they are inter partes — offer several advantages, including the possibility that they can be terminated by settlement, and have been so terminated by the PTAB in prior cases. (See, e.g., Komatsu America Corp. v. Hagenbuch, IPR2013-00130) However, in the Interthinx case, as a result of the very advanced stage of the proceedings (the “matter was briefed fully and ready for oral hearing” at the time of the motion), the Board terminated the petitioner from the case — as required by the settlement — but determined to continue the proceeding to a final written decision. The Boart stated...
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