Takeaway: The Board did not terminate a proceeding under 35 U.S.C. § 315(d) where the other proceeding could terminate through settlement and the issues were not identical.

In its Order, the Board denied Patent Owner’s requests to file (1) a motion to terminate under 35 U.S.C. § 315(d); (2) motion to consolidate with IPR2014-00660; and (3) a motion to join with IPR2014-00660. The Board denied authorization to file a motion to terminate, because there is a possibility of termination of the review in IPR2014-00660 due to settlement and the similarity of the issues in the present review to those in the IPR2014-00660 are not enough to persuade the Board to terminate the present proceeding. 

The Board also denied authorization to file a motion for joinder and consolidation, because it did not find that a joinder or consolidation would result in an overall increase in the efficiency of the proceedings.  Many grounds overlap, but there are differences in the grounds, petitioners, and declarants.  However, the Board did coordinate the schedules of the two proceedings, leaving the parties in each proceeding free to stipulate different dates for Due Dates 1 through 5.

Compass Bank, Commerce Bancshares, Inc., and First National Bank of Omaha v. Intellectual Ventures II, LLC, IPR2014-00724
Paper 16: Order on Conduct of the Proceedings 
Dated: November 19, 2014 
Patent 5,745,574 
Before: Kristen L. Droesch, Jennifer S. Bisk and Justin Busch
Written by: Busch
Related Proceeding: C-Cation Techs., LLC v. Comcast Corp., No. 2:11-cv-00030 (E.D. Tex.)