Board Declines to Issue Final Written Decision without a Petitioner

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In Xerox Corp. v. RR Donnelley & Sons Co., IPR2013-00529, Paper 21, IPR2013-00538, Paper 20 (August 29, 2014), the Board terminated the proceedings on the joint motion of the parties, declining the patent owners request that the proceeding continue to final written decision despite the settlement.  In the joint motion to terminate, the patent owner requested: “Patent Owner does not request dismissal of the review and requests that these proceedings advance to final written decision after Patent Owner is heard at final argument.”  The Board noted that “[g]enerally, the Board expects that a proceeding will terminate after the filing of a settlement agreement.”  The Board said “The joint motion to terminate with respect to Petitioner does not persuade us that deviating from the general expectation of termination via settlement is warranted in this situation. At this stage in the proceeding, the record lacks full briefing, including Petitioner’s reply, and accordingly lacks “streamlin[ed,] and converg[ed]” issues, as necessary to render a decision in a “timely, fair, and efficient manner.”

Topics:  Dismissals, Patent Litigation, Patent Trial and Appeal Board, Patents, RR Donnelley & Sons, Xerox

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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