iTakeaway: The Board may decline a Petitioner’s request to terminate proceedings in the absence of mutual agreement between the parties or the absence of the Board’s inability to determine obviousness.
In its Decision, the Board denied Petitioner’s Motion to Terminate because Petitioner had not identified any precedent for terminating proceedings without issuing a final written decision under circumstances other than mutual agreement between the parties or an inability of the Board to determine obviousness. Neither condition was present in the current proceeding.
Previously, the Board had instituted review on claim 25 of the ’752 Patent as anticipated by Havinis ’102. The parties to this proceeding are currently litigating other challenges to the same patent in a separate proceeding (CBM 2014-00006). In its Motion to Terminate, Petitioner had requested that the Board terminate this inter partes review, provided that the Board refrained from entering a final written decision against it when terminating the proceeding. In a conference call, counsel for Patent Owner stated that it would agree to termination of the current proceeding only if the Board treated Petitioner’s Motion as an abandonment of the challenge under 37 C.F.R. § 42.73(b)(4), and entered a final written decision against Petitioner.
The Board declined to treat Petitioner’s Motion as an abandonment of the challenge, citing the conditional nature of Petitioner’s request. It noted, however, that Petitioner had not identified any precedent for terminating proceedings in the absence of mutual agreement of the parties or the Board’s inability to determine obviousness. The Board concluded that it was not appropriate to exercise its discretion under 35 U.S.C. § 315(d) to terminate the proceeding without a final written decision, and consequently denied Petitioner’s Motion.
Google, Inc. v. Unwired Planet, LLC, IPR2014-00037
Paper 20: Decision on Petitioner’s Motion to Terminate
Dated: June 12, 2014
Patent 7,203,752
Before: Michael W. Kim, Jennifer S. Bisk, Barbara A. Parvis, and George R. Hoskins
Written by: Bisk
Related Proceedings: Google, Inc. v. Unwired Planet, LLC, CBM 2014-00006
