In, Inc. v. VirtualAgility, Inc., the PTAB refused to permit the Patent Owner to file a motion to vacate the Final Written Decision, even though the parties settled while an appeal to the Federal Circuit was still pending. CBM2013-00024, Paper 52 (Nov. 24, 2014).

The Board held in the CBM Review that all challenged claims were unpatentable. The Patent Owner timely filed its Notice of Appeal to the Federal Circuit and, within two months of the Final Written Decision, the parties settled and moved to file their agreement as confidential business information. The Patent Owner then requested authorization to file a motion to vacate the Final Written Decision and terminate the proceeding pursuant to 35 U.S.C. § 317(a).

In support of its request, the Patent Owner argued that

  1. a CBM Review is a trial per 37 C.F.R. § 42.300;
  2. a trial is a contested matter per 37 C.F.R. § 42.2; and
  3. because the Patent Owner was appealing the Board’s Final Written Decision, the matter remained contested, and thus the trial was not yet complete.

In declining the Patent Owner’s request, the Board first noted that the Petitioner’s agreement to “abandon” the CBM proceeding and appeal was “inconsequential to the merits or legitimacy of the Final Written Decision.”  Even if the Petitioner’s lack of further participation could be characterized as “abandonment,” it did not undermine the Final Written Decision because “[n]o more participation by Petitioner is either necessary or required.”

The Board next held that a trial becomes complete when the Final Written Decision is rendered because “[a]ppellate review . . . is not a part of the trial before the Board.”  Concluding that “an already issued Final Written Decision should not be vacated based on settlement between the parties,” the PTAB implied that doing so would be inconsistent with the Board’s authority to issue a Final Written Decision even after settlement and termination of a proceeding with respect to each petitioner pursuant to 35 U.S.C. § 327(a).

Ultimately finding that the Petitioner’s “alleged ‘abandonment’ fail[ed] to justify vacating the Final Written Decision,” the Board further reiterated the “strong public interest in the finality of judgments,” including the interest “in not having claims which have been proven unpatentable remain in an issued patent.”

Consistent with the Board’s prior reluctance to terminate AIA proceedings due to settlements reached after the Board has invested substantial time, this decision shows that the Board is similarly unwilling to vacate a Final Written Decision due to settlement.