Board Declines to Issue Final Written Decision without a Petitioner

In Xerox Corp. v. RR Donnelley & Sons Co., IPR2013-00529, Paper 21, IPR2013-00538, Paper 20 (August 29, 2014), the Board terminated the proceedings on the joint motion of the parties, declining the patent owners request that the proceeding continue to final written decision despite the settlement.  In the joint motion to terminate, the patent owner requested: “Patent Owner does not request dismissal of the review and requests that these proceedings advance to final written decision after Patent Owner is heard at final argument.”  The Board noted that “[g]enerally, the Board expects that a proceeding will terminate after the filing of a settlement agreement.”  The Board said “The joint motion to terminate with respect to Petitioner does not persuade us that deviating from the general expectation of termination via settlement is warranted in this situation. At this stage in the proceeding, the record lacks full briefing, including Petitioner’s reply, and accordingly lacks “streamlin[ed,] and converg[ed]” issues, as necessary to render a decision in a “timely, fair, and efficient manner.”





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About Bryan Wheelock

Education J.D., Washington University in St. Louis B.S.E. in Mechanical Engineering, Duke University Bryan Wheelock's practice includes preparation and prosecution of patent and trademark applications and drafting of intellectual property agreements, including non-compete agreements. He has brought and defended lawsuits in federal and state courts relating to intellectual property and has participated in seizures of counterfeit and infringing goods. Bryan prepares and prosecutes U.S. and foreign patent applications for medical devices, mechanical and electromechanical devices, manufacturing machinery and processes, metal alloys and other materials. He also does a substantial amount of patentability searching, trademark availability searching and patent and trademark infringement studies. In addition to his practice at Harness Dickey, Bryan is an Adjunct Professor at Washington University School of Law and Washington University School of Engineering.