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Be Advised: Settlement Does Not Necessarily End An IPR Or PGR, PTAB Litigation Blog

February 2018

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The AIA expressly anticipates and permits a patent owner and a petitioner to reach a settlement during the pendency of a post-grant proceeding. For IPRs, 35 U.S.C. § 317(a) is entitled "Settlement" and provides, in pertinent part:

An inter partes review instituted under this chapter shall be terminated with respect to any petitioner upon the joint request of the petitioner and the patent owner, unless the Office has decided the merits of the proceeding before the request for termination is filed. * * * If no petitioner remains in the inter partes review, the Office may terminate the review or proceed to a final written decision under section 318(a).

A parallel provision governs party settlements and requests to terminate PGRs (including CBMs). See 35 U.S.C. § 327(a).

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