, Inc. v. VirtualAgility, Inc.

Addressing the issues of vacating a final written decision and terminating a trial proceeding, the Patent Trial and Appeal Board (PTAB or Board) denied the patent owner’s request for authorization to file a motion to vacate the final written decision after a settlement was reached between the parties.  The Board concluded that where the petitioner has already proven that the challenged claims are unpatentable, and where a final written decision has already been rendered, the petitioner’s lack of further participation in any subsequent appeal is inconsequential to the merits or legitimacy of the final written decision., Inc. v. VirtualAgility, Inc., Case No. CBM2013-00024 (PTAB, Nov. 24, 2014) (Lee, APJ). filed a petition for inter partes review, challenging all claims of VirtualAgility’s patent relating to management information processing.  The Board rendered a final written decision, holding that the challenged claims were unpatentable.  VirtualAgility appealed the final written decision to the U.S Court of Appeals for the Federal Circuit and the parties filed a joint motion to file a settlement as confidential business information.  VirtualAgility then requested the Board for authorization to file a motion to vacate the final written decision based on Salesforce’s agreement not to participate in any subsequent appeal.  VirtualAgility argued that the final written decision should be vacated based on Salesforce’s “abandonment” of the trial proceeding.

The Board disagreed with VirtualAgility’s characterization that the trial before the Board was incomplete, stating that the trial proceeding is complete when the final written decision is entered and that appellate review is not part of the trial proceeding before the Board.  The Board also dismissed the argument that Salesforce abandoned the trial proceeding, stating that Salesforce’s agreement not to participate further does not undo Salesforce’s work in completing the trial and obtaining an adverse judgment against VirtualAgility.  Analyzing § 327(a), the Board concluded that an already issued final written decision should not be vacated based on settlement between the parties.

The Board also disagreed with VirtualAgility’s argument that there is no public interest in allowing the final written decision to stand, finding that the public interest lies in not having claims that have been proven unpatentable remain in an issued patent.