PTAB Scheduling Orders Begin Suggesting ADR Statements  

The Patent Trial & Appeal Board (PTAB) has the power to terminate an Inter Partes Review (IPR), Post Grant Review (PGR), or a Covered Business Method (CBM) proceeding upon request of the parties. This discretionary power to terminate a patentability challenge by agreement (37 C.F.R. § 42.74) is a fairly new concept for patentability challenges. Historically reexamination proceedings could not be terminated by agreement. In reexaminations (inter partes) where the contesting parties settled their dispute, the challenging party would simply drop out of the inter partes reexamination, but the Office would continue with the reexamination in the interests of public policy. (cfterminating an inter partes patent reexamination by operation of estoppel). Since accepting AIA trial petitions, the PTAB has encouraged settlements in many instances. Typically, panels inquire as to settlement possibilities during teleconferences with the parties. More recently, the PTAB is encouraging settlement by assigning a date on the Scheduling Order for an explicit ADR statement from the parties. For example, in CBM2015-00006 (Paper 7, April 21, 2015), the Board provided the following in the Scheduling Order (here):

ADR STATEMENT The parties are encouraged to discuss promptly alternative means for resolving their disputes regarding the subject matter of this proceeding. To advance the opportunities for early disposition, petitioner is encouraged to notify the Board, by the due date identified in the Appendix to this Order, that the parties have conferred regarding alternative dispute resolution and whether the parties have reached any agreements.

DUE DATE APPENDIXINITIAL CONFERENCE CALL ............. UPON REQUEST ADR STATEMENT DUE .......................................................... May 20, 2015 DUE DATE 1 ........................................................................... June 22, 2015

Whether or not the new initiative (not universally followed by all panels) results in increased settlements remains to be seen, but it certainly can't hurt. The PTAB greatly benefits from the ability to terminate post grant patent proceedings because Board resources can be moved away from post grant proceedings that are no longer commercially relevant (at least as to the present parties) to those newly initiated, and there are plenty of them.