After the initiation of a trial, the Petitioner and the Patent Owner may submit a request to terminate the inter partes review proceedings under 37 C.F.R. § 42.72. 35 U.S.C. § 317 provides that “[i]f 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).” 35 U.S.C. § 317(a) (emphasis added). Further guidance may be found in the Office Patent Trial Practice Guide (77 Fed. Reg. 48756, 48768 (August 14, 2012)). A settlement agreement must be in writing and filed in the Office before termination of a trial. If requested by a party, the agreement shall be treated as business confidential and kept separate from the file of the involved patents.

To challenge a petitioner’s identification of all real parties in interest, the patent owner should address at least the factors identified the Trial Practice Guide. These factors include whether a non-party exercises control over a petitioner’s participation and if a non-party is funding or directing the proceeding. The patent owner cannot merely rely on disclosures provided in a litigation under Federal Rule of Civil Procedure 7.1 and similar local rules, particularly where neither party has identified that litigation as a related matter to the inter partes review.

The Board’s exclusive jurisdiction under 37 C.F.R. § 42.3(a) extends to the patent or application that is the subject the proceeding and not to patents that are in the same family. Specifically, the Board declined to exercise jurisdiction over patent applications, currently pending before the USPTO, that are divisional applications of the patent that is the subject of inter partes review.

The Board may recognize counsel pro hac vice upon a showing of good cause and with lead counsel a registered patent practitioner. 37 .C.F.R. § 42.10(c). The Patent Owner demonstrated good cause by showing, among other things, that counsel seeking to appear was an experienced litigator having an established familiarity with the subject matter at issue in the proceeding. Specifically, counsel was the lead counsel in six district court actions involving the same patent at issue in the post-grant review of the covered business method patent.

The Board exercised its discretion and ordered to stay a concurrent reexamination, pending the termination or completion of the inter partes review. Four of the five Petitioners were also the third-party requesters who filed the request for reexamination, the Petitioners asserted the same grounds of challenge based on the same prior art in the inter partes review as some of those rejections adopted by the Examiner in the reexamination. However, all of the claims being challenged in the inter partes review were different than those claims subject to reexamination.

The Board reasoned that even though it will not ordinarily stay a reexamination, “[c]onducting the reexamination concurrently with the instant proceeding . . . would duplicate efforts within the Office and could potentially result in inconsistencies between the proceedings.” Further, “[a]ny Board decision on whether to institute a review or final written decision with respect to the patentability of the challenged claims will likely simplify the issues in the reexamination.”