Settling an inter partes review after a final written decision by the Patent Trial and Appeal Board may not result in the PTAB vacating the decision.
In Dish Network LLC v. TQ Beta, LLC, the Patent Trial and Appeal Board (PTAB) recently denied a patent owner’s request to vacate a final written decision that was pending on appeal to the US Court of Appeals for the Federal Circuit when the parties settled their dispute involving the patent subject to the inter partes review (IPR).
The PTAB held that although the statutes and regulations governing IPRs encourage settlements, it would be against the public interest to vacate the final written decision simply because the parties have settled once a decision has been issued finding claims to be unpatentable on the merits.
The PTAB entered a final written decision entering adverse judgment against the patent owner as to three claims. The patent owner appealed to the US Court of Appeals for the Federal Circuit. Prior to receiving a decision on appeal, the parties settled their dispute over the patent subject to the IPR. The patent owner then filed an unopposed motion asking the court to dismiss the appeal and remand the case to the PTAB so that it may file a motion to vacate the final written decision. The court granted the motion but noted it took no position on the motion to vacate.
The patent owner argued that vacating the final written decision is appropriate because the law and sound policy favor and encourage settlements. If the PTAB does not vacate the final written decision, the patent owner argued, there would be no incentive for parties to settle their disputes after a final written decision has been entered because the parties would be forced to go through the full appeal. The PTAB disagreed and noted that Congress set forth the dual policy goals of encouraging settlement, and cancelling claims that have been shown to be unpatentable on the merits during the course of such review. The PTAB, citing 37 CFR 42.74(a), noted that it has the authority to independently determine questions of patentability, even after parties have settled, in order to promote the public policy favoring the cancellation of any claim that has been shown to be unpatentable on the merits, thereby promoting the integrity of the patent system.
If you have any questions or would like more information on the issues discussed in this LawFlash, please contact the authors, Dion M. Bregman in our Silicon Valley office and Bradford A. Cangro in our Washington office, or any of the following lawyers from Morgan Lewis’s post-grant proceedings team:
Joshua M. Dalton
Louis W. Beardell, Jr.
 Case IPR2015-01756, Paper 39 (PTAB April 12, 2018).
 Slip op. at 6-7.
 Slip op. at 2.
 Id. at 3.
 Id. at 4.
 Id. at 5.