The PTAB denied a Petitioner’s request for authorization to file a motion to terminate an IPR without a final written decision, made only two months after the Board issued a decision instituting the IPR. Masterimage 3D, Inc. v. Reald Inc., Case IPR2015-00035, Paper No. 30 (June 25, 2015).
After institution of an IPR but before the Patent Owner had filed a response, the Petitioner Masterimage 3D, Inc. sought permission to request adverse judgment and termination of the IPR, to avoid the estoppel effects of a final written decision. The Patent Owner opposed this request, on the basis that it desires the Petitioner to be bound by estoppel effects of a final written decision under 35 U.S.C. § 315(e); and because the Patent Owner may file a motion to amend in the proceeding.
The Board’s decision contrasts a request for adverse judgment under 37 C.F.R. § 42.73(b), and a request to terminate the proceeding under 37 C.F.R. § 42.72. Although a party may request an adverse judgment under § 42.73(b) at any time during a proceeding, the Board will only terminate a trial without rendering a final written decision “where appropriate” under § 42.72. The Board determined that termination of the IPR was not appropriate under the circumstances of this case, because the proceeding was “not in a preliminary stage,” two months after a decision to institute had been issued, and because the Patent Owner opposed the request, as it wanted the Petitioner to be bound by any estoppel effects of a final written decision. Accordingly, the Board denied authorization to file a motion to terminate.
This case illustrates the risk that a Petitioner may not be able to terminate a PTAB proceeding before the Board issues a final written decision, even if it requests adverse judgment relatively early in the proceeding, before the Patent Owner has filed a response to the petition. Parties considering filing an IPR petition should keep this in mind, and not file the petition unless they are prepared to take the case to final hearing and issuance of a final written decision.