The parties may agree to settle a proceeding. The Board, however, is not a party to the settlement and has the discretion whether to terminate the proceeding or continue review of the challenged patent. 37 C.F.R. § 42.47.
Blackberry Corp. v. Mobilemedia Ideas LLC, IPR2013-00036, Paper 64 (PTAB Jan. 21, 2014). Petitioner and patent owner filed a joint motion to terminate the proceeding after the oral hearing was held. The Board terminated the proceeding with respect to petitioner, but not with respect to patent owner. Applying 37 C.F.R. § 42.74(a), the Board held that, while the parties may have settled their issues with respect to the involved patent, the Board is not a party to the settlement and may determine independently any question of patentability. The Board determined that it would proceed to a final written decision in view of the advanced stage of the proceeding.
Blackberry Corp. v. Mobilemedia Ideas LLC, IPR2013-00036, Paper 64 (PTAB Jan. 21, 2014). Petitioner and patent owner filed a joint motion to terminate the proceeding approximately seven months after institution of the IPR. The Board terminated the proceeding with respect to petitioner, but not with respect to patent owner. Applying 37 C.F.R. § 42.74(a), the Board held that, while the parties may have settled their issues with respect to the involved patent, the Board is not a party to the settlement and may determine independently any question of patentability. The Board ultimately issued a final written decision finding the challenged claims unpatentable and denying patent owner’s motion to amend.
Apple Inc. v. Smartflash LLC, CBM2015-00016, Paper 56 (PTAB Mar. 29, 2016). In a previous CBM proceeding, the Board issued a final written decision determining that claim 1 is unpatentable under 35 U.S.C. § 103. The Federal Circuit affirmed the unpatentability of claim 1. In the present CBM proceeding, petitioner challenged claim 1 under 35 U.S.C. § 101. The Board determined that termination of review of claim 1 was appropriate in the present CBM proceeding because the claim had been finally cancelled, and any decision the Board might reach in the present proceeding would be moot and purely advisory.