Settlement 5 Days Before Final Written Decision Deadline Results in Termination Of IPR

In an order issued in Petroleum Geo-Services Inc. v. Westerngeco LLC, IPR2016-00407, IPR2016-00499, Paper 29 (P.TA.B. Jul. 5, 2017), the PTAB terminated the proceedings after the parties indicated that they had settled their dispute. What’s interesting here is that the parties reached settlement a mere five days before the statutory deadline for the PTAB to issue a final written decision and the PTAB terminated the proceedings without issuing a final written decision.

Five days prior to the one year statutory deadline to issue a final written decision, both parties indicated to the PTAB via email that they had settled their dispute. The PTAB subsequently set a deadline for the parties to file a joint motion to terminate the proceedings pursuant to a settlement agreement, noting that a final written decision would be issued if the parties did not comply with the deadline. The parties timely filed the joint motion to terminate the proceedings and the PTAB proceeded to terminate the proceedings in lieu of issuing final written decisions.

This is a departure from prior cases, in which the PTAB has issued a final written decision after parties reached settlement relatively late in the proceeding (e.g., on the eve of oral hearing). In fact, this decision is surprising considering that the PTAB pointed out that it was ready to issue a final written decision. The PTAB stated that termination was appropriate for these two cases because the termination would promote efficiency and minimize unnecessary costs.

Despite the PTAB’s decision in this proceeding not to issue a final written decision, parties should still carefully evaluate the timing of settlement because reaching a settlement and filing a joint motion to terminate relatively late in the proceeding does not guarantee that the PTAB will terminate the proceeding without issuing a final written decision.