The PTAB designated one decision as precedential and three decisions as informative, providing practitioners with guidance on trial practice and procedure before the Board.
Submission of collateral agreements referred to in settlement agreements
In DTN, LLC v. Farms Technology, LLC, IPR2018-01412, Paper 21 (Jun. 14, 2019) (precedential), the parties reached settlement and jointly requested termination of the proceeding. The parties submitted the settlement agreement and collateral agreements referenced in the settlement agreement and jointly requested that the collateral agreements be expunged from the record.
The Board denied the joint request to expunge the collateral agreements. The Board noted that the controlling statute (35 U.S.C. § 317(b)) requires the filing of “[a]ny agreement or understanding between the patent owner and a petitioner, including any collateral agreements referred to in such agreement or understanding.” The Board determined that collateral agreements do not need to be between the patent owner and the petitioner and do not need to be made in connection with, or in contemplation of, terminating an IPR to fall within the scope of § 317(b).
The Board indicated that the collateral agreements would be maintained as business confidential information and made available to Federal Government agencies on written request or to any person on a showing of good cause. Parties contemplating settlement should be aware of the PTAB’s practice concerning collateral agreements when negotiating terms.
Institution of review of a design patent for lack of ornamentality
In Sattler Tech Corp. v. Humancentric Ventures, LLC, PGR2019-00030, Paper 9 (Jul. 26, 2019) (informative), the Board instituted a post-grant review proceeding of a design patent. The decision demonstrates that the Board may institute PGR review of a design patent where the petitioner shows it is more likely than not that the claimed portions of the design are primarily functional, not ornamental.
Denial of unopposed motion to amend in an IPR terminated due to settlement
In Kokusai Electric Corp. v. ASM IP Holding B.V., IPR2018-01151, Paper 38 (Aug. 20, 2019) (informative), the parties reached settlement and jointly requested termination of the IPR proceeding. Interestingly, the parties also jointly requested that an unopposed motion to amend be granted-in-part in view of the settlement agreement. The Board granted termination of the proceeding and denied the motion to amend, stating that “the fact that Petitioner has withdrawn its opposition as a consequence of the settlement of this proceeding does not remove the issue of patentability.” The Board stated that proceeding with an analysis of the patentability of the proposed substitute claims in this situation would not be an efficient use of Board resources. The Board noted that the patent owner may pursue the claims presented in the motion to amend in a reissue or reexamination proceeding.
Ground rules for handling confidential information during oral hearing
In Curt G. Joa, Inc. v. Fameccanica.data S.P.A., IPR2016-00906, Paper 61 (Jun. 20, 2017) (informative), the patent owner requested permission to discuss confidential information during oral hearing and to close a portion of the hearing to the public. The Board granted the request. The Board divided the hearing into an initial portion that is open to the public followed by a closed portion that is closed to persons not authorized to access confidential information. The Board limited each party to 15 minutes of argument relating to the confidential information. The Board also directed parties to refrain from including information designated as confidential in any demonstrative exhibit.