Takeaway: A petitioner may seek to request judgment against itself at any time without Board authorization; however, Board authorization is required if a petitioner further seeks to terminate the proceeding without a final written decision and its accompanying estoppel effects.

In its Decision, the Board denied Petitioner’s Request for Authorization to File a Motion to Terminate trial without a final written decision. Petitioner “sought authorization to file a motion to terminate trial that would result in a judgment without a final written decision.” Petitioner sought an adverse judgment “due to Petitioner’s abandonment of the contest under 37 C.F.R. § 42.73(b)(4), but [also] sought to avoid the estoppel effects of a final written decision.” Patent Owner opposed.

The Board first noted that “Judgment” is defined as “a final written decision by the Board, or a termination of a proceeding.” 37 C.F.R. § 42.2. “Whether a judgment is a final written decision or a termination of a proceeding depends on the circumstances.” While Board authorization is not required for a party to request judgment against itself at any time during a proceeding, including abandoning the contest, Board authorization is required if the party characterizes the adverse judgment as a termination. Here, because Petitioner requested authorization to file a motion to terminate the proceeding (in addition to stating its intent to abandon the contest), the Board had discretion to consider “whether terminating, without rendering a final written decision, is appropriate under the circumstances presented.” See 37 C.F.R. § 42.72.

In its following analysis, the Board noted that the proceeding was not in a preliminary stage and Patent Owner opposed Petitioner’s efforts to avoid estoppel. Under the circumstances, the Board denied “Petitioner’s request for authorization to file a motion to terminate, without a final written decision, based on a request for adverse judgment.”

Masterimage 3D, Inc. v. Reald Inc., IPR2015-00035
Paper 30: Decision Denying Request for Authorization
Dated: June 25, 2015
Patent: 7,857,455 B2
Before: Jameson Lee, James B. Arpin, and Bart A. Gerstenblith
Written by: Gerstenblith