Addressing whether a petitioner seeking inter partes review (IPR) is entitled to withdraw its petition prior to an institution decision, the Patent Trial and Appeal Board (PTAB or Board) concluded that where the petitioners were time-barred permission to withdrawal was not required and that the Board has discretion to dismiss petitions in order to promote efficiency and minimize unnecessary costs. Samsung Elecs Co., Ltd v. NVIDIA Corp., Case Nos. IPR2015-01270; -01314 (PTAB, Dec. 8, 2015) (Bunting, APJ).

Samsung filed two IPR petitions. After NVIDIA filed its preliminary responses, but before the PTAB determined whether to institute the IPRs, Samsung filed a motion to dismiss both petitions. In its motion, Samsung noted that it was served with a complaint asserting infringement in the stayed district court action more than a year beforehand.

NVIDIA opposed Samsung’s motion on several grounds. NVIDIA first argued that termination is only allowed after an institution decision and that no provision allows termination prior to institution. NVIDIA also argued that dismissal would cause prejudice because it expended significant resources in opposing Samsung’s IPR petitions.

Rejecting both arguments, the Board granted Samsung’s motion. The Board first rejected the argument that a petitioner cannot withdraw its petition before institution, reasoning that the rules do not expressly preclude termination of an IPR during the preliminary proceeding state. The Board also rejected NVIDIA’s prejudice argument, reasoning that it failed to consider the requirements of IPR proceedings should trial be instituted. However, the Board noted that Samsung would be time-barred from filing additional IPR petitions on the challenged patents. Under these circumstances, the Board exercised its discretion and dismissed the petitions.