DTN and Farms Technology settled two inter partes reviews and tried to keep two side agreements out of the record. The patent owner hadn’t signed either, and neither depended on ending the cases. The Board’s answer, now precedential: “any” means “any.” Confidential filing was available, and granted.
Before you read
An IPR settlement refers to a supply agreement the patent owner didn’t sign. Does the supply agreement have to be filed with the Office?
Yes. In DTN (precedential), collateral agreements “need only be ‘referred to’ in the Settlement Agreement” to be covered by § 317(b).
Part 1 of 7
DTN and Farms Technology settled two IPRs and filed their settlement agreement, as the statute requires. The agreement referred to two other agreements. The parties asked to expunge those from the record. The patent owner wasn’t a party to either, they said, and neither depended on ending the IPRs. The Board denied both requests.
“The term ‘any’ means ‘any.’”
Part 2 of 7
An IPR can be ended by settlement before the Board decides the merits. The settlement must be filed: “Any agreement or understanding between the patent owner and a petitioner, including any collateral agreements referred to in such agreement or understanding, made in connection with, or in contemplation of, the termination of an inter partes review under this section shall be in writing and a true copy … filed in the Office.”
A collateral agreement is a side deal, such as a license, supply contract or covenant, that sits alongside the main settlement. A true copy is a complete and accurate one.
Test yourself. Each card describes an agreement; tap to see whether DTN requires filing it.
Part 3 of 7
The BoardThe settlement was between owner and petitioner and referred to both side agreements. Under the statute, that is all it takes.
The BoardThe “in contemplation of” requirement applies to the settlement agreement. Collateral agreements “need only be ‘referred to’ in the Settlement Agreement to qualify under § 317(b), which they undisputedly are.”
The Board denied the motions to expunge, granted the joint requests to treat the agreements as confidential, and terminated both IPRs.
Part 4 of 7
Confidential treatment comes from the statute. On request, a filed agreement “shall be treated as business confidential information, shall be kept separate from the file of the involved patents, and shall be made available only to Federal Government agencies on written request, or to any person on a showing of good cause.”
It means
It doesn’t mean
Deleting a reference is not a substitute for complying. The documents filed have to reflect the actual settlement arrangement.
Part 5 of 7
Kokusai v. ASM, an informative 2019 decision, shows a related limit. The parties settled while the owner’s unopposed motion to amend was pending, and asked the Board to grant it in part.
The tempting reading
Both sides agree, so the Board will grant the amendment as part of the settlement.
What the Board did
It terminated the proceeding “without reaching a decision on the Motion to Amend.” The owner could still pursue amendments through reissue or reexamination.
Source
Part 6 of 7
Choose your side.
0 of 5 reviewed
Part 7 of 7
Both decisions date from 2019. DTN’s facts involved side agreements the patent owner hadn’t signed; its holding is broad, but it was applied to those facts. And settlements are a smaller share of how IPRs end than they were.
Settlements divided by concluded proceedings: denied institution, settled, dismissed, requested adverse judgment and final written decision, excluding joined cases. Institution denials are in the denominator, so more denials alone would push the rate down. The drop doesn’t by itself show parties are less willing to settle.
Source
The takeaway
Put disclosure in the closing plan. The deal can be done while the Office filing is still incomplete.
Precedential decisions bind the Board within their designated scope. Informative decisions show the Office’s reasoning but do not bind the Board. Court opinions are cited for what they decided; later history was checked on the date shown above.