The Board Advises How to Settle an IPR

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In Commscope, Inc, v. Pangrac and Associates, IPR2013-00461, Paper 11 (March 5, 2014), the Board reminded the parties how to settle an IPR.  Generally, the Board expects that a proceeding will terminate after the filing of a settlement agreement, explaining that the rule governing settlement indicates that any agreement between the parties made in connection with, or in contemplation of, the termination of a proceeding shall be in writing and filed with the Board.  37 C.F.R. § 42.74.

The Board explained that a joint motion must: (1) include a brief explanation as to why termination is appropriate; and (2) confirm the absence of any related district court litigation involving the patent in dispute.  The Board reiterated that the joint motion to terminate must be accompanied by a true copy of the parties’ settlement agreement, as required by 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b), and said that a redacted version of the settlement agreement will not be accepted as a true copy of the settlement agreement.

The settlement areement can be treated as business confidential 37 C.F.R. § 42.74(c), the parties must file the settlement agreement electronically in the Patent Review Processing System (PRPS) as an exhibit in accordance with the instructions provided on the Board’s website (uploading as “Parties and Board Only”).  Detailed instructions can be found in FAQ G2 on the Board’s website at http://www.uspto.gov/ip/boards/bpai/prps.jsp

Topics:  Inter Partes Review Proceedings, Patent Litigation, Patents

Published In: Civil Procedure Updates, Intellectual Property Updates

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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