Int’l Business Machines Corp. v. Financial Systems Tech Pty. Ltd.

IPR2013-00078, Paper No. 7

U.S. Patent No. RE40,526 (reissue)

[The Board’s Pre-institution Settlement Guidance]

Facts

During a conference call on February 8, 2013, where the Patent Owner Preliminary Response was due March 17, 2013, Petitioner and Patent Owner sought guidance to file their settlement agreement, which contemplated dismissal of the pending district court proceeding and this inter partes review proceeding. Both parties also requested to treat the agreement as business confidential and kept separate from the involved patent files. The Board did ask during the conference call if the parties were prepared to file the settlement agreement.

Holding

The Board held that the request to treat the agreement as business confidential must be filed with the settlement agreement in order to terminate the proceeding. In addition, the parties must file a joint motion to terminate the proceeding that briefly explained why termination was appropriate in this case, and was due February 11, 2013 (prior to the March 17, 2013 deadline).

Takeaway

The Board is beginning to shape the proper requirements for terminating an inter partes review proceeding that has yet to be initiated.

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