U.S. Code » Title 35 » Part PART III— PATENTS AND PROTECTION OF PATENT RIGHTS › Chapter CHAPTER 31— INTER PARTES REVIEW

35 U.S.C. § 317

Settlement

Read at: OLRCuscode.house.gov CornellLII GovInfogovinfo.gov JustiaTitle 35 CasesGoogle Scholar
(a)In General.—An inter partes review instituted under this chapter shall be terminated with respect to any petitioner upon the joint request of the petitioner and the patent owner, unless the Office has decided the merits of the proceeding before the request for termination is filed. If the inter partes review is terminated with respect to a petitioner under this section, no estoppel under section 315(e) shall attach to the petitioner, or to the real party in interest or privy of the petitioner, on the basis of that petitioner’s institution of that inter partes review. If no petitioner remains in the inter partes review, the Office may terminate the review or proceed to a final written decision under section 318(a).(b)Agreements in Writing.—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 of such agreement or understanding shall be filed in the Office before the termination of the inter partes review as between the parties. At the request of a party to the proceeding, the agreement or understanding 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.(Added Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, § 4604(a)], Nov. 29, 1999, 113 Stat. 1536, 1501A–570; amended Pub. L. 107–273, div. C, title III, § 13202(a)(5), (c)(1), Nov. 2, 2002, 116 Stat. 1901, 1902; Pub. L. 112–29, § 6(a), Sept. 16, 2011, 125 Stat. 303.)Editorial NotesAmendments

2011—Pub. L. 112–29 amended section generally. Prior to amendment, section related to restriction on subsequent request for inter partes reexamination.

2002—Pub. L. 107–273, § 13202(c)(1), made technical correction to directory language of Pub. L. 106–113, which enacted this section.

Subsec. (a). Pub. L. 107–273, § 13202(a)(5)(A), substituted “third-party requester nor its privies” for “patent owner nor the third-party requester, if any, nor privies of either”.

Subsec. (b). Pub. L. 107–273, § 13202(a)(5)(B), struck out “United States Code,” after “title 28,”.

Statutory Notes and Related SubsidiariesEffective Date of 2011 Amendment

Amendment by Pub. L. 112–29 effective upon the expiration of the 1-year period beginning on Sept. 16, 2011, and applicable to any patent issued before, on, or after that effective date, with provisions for graduated implementation, see section 6(c)(2) of Pub. L. 112–29, set out as a note under section 311 of this title.

Effective Date

Section effective Nov. 29, 1999, and applicable to any patent issuing from an original application filed in the United States on or after that date, see section 1000(a)(9) [title IV, § 4608(a)] of Pub. L. 106–113, set out as an Effective Date of 1999 Amendment note under section 41 of this title.

Notes of Decisions
Cited in 26 cases (5 in the last 5 years), 2009–2022 · leading case: Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044 (Fed. Cir. 2017).
Sort: Relevance Newest Treatment
Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044 (Fed. Cir. 2017). · cites it 4× “We recently addressed similar language in pre-AIA 35 U.S.C. § 317 (b) (2006), which governed estoppel applicable to inter partes reexamination proceedings.”
Virnetx Inc. v. Apple Inc., 931 F.3d 1363 (Fed. Cir. 2019). · cites it 8× “The United States Patent and Trademark Office ("PTO") concluded that Apple was not barred from maintaining its reexams by the estoppel provision of the pre-America Invents Act ("AIA") version of 35 U.S.C. § 317 (b) (2006). The Board affirmed the Examiner's determination that the…”
In Re: Affinity Labs of Texas, LLC, 856 F.3d 883 (Fed. Cir. 2017). · cites it 6× “In response, Affinity petitioned the PTO to vacate the entire merged reexamination proceeding, arguing that the estop-pel provision in pre-America Invents Act (AIA) 35 U.S.C. § 317 (b) 1 extends to all parties, not just Volkswagen, and all claims challenged in the three…”
Bettcher Indus., Inc. v. Bunzl USA, Inc., 661 F.3d 629 (Fed. Cir. 2011). · cites it 2× “*646 35 U.S.C. § 317 . Section 317 includes two provisions.”
Click-To-Call Tech., Lp v. Ingenio, Inc., 899 F.3d 1321 (Fed. Cir. 2018). · cites it 2× “, 35 U.S.C. § 317 (a) (addressing continua- tion of IPR as to some petitioners after dismissal of others).”
Saint Regis Mohawk Tribe v. Mylan Pharm. Inc., 896 F.3d 1322 (Fed. Cir. 2018). · cites it 2× “35 U.S.C. § 317 (a). The Director has also been granted the right to participate in appeals “even if the private challengers drop out.”
Regents of the Univ. of Minn. v. Lsi Corp., 926 F.3d 1327 (Fed. Cir. 2019). “35 U.S.C. § 317 (a). If the patent owner stops participating, "[t]he Board has construed its rules to allow it to continue review.”
Consum. Watchdog v. Wisconsin Alumni Rsch. Found., 753 F.3d 1258 (Fed. Cir. 2014). “35 U.S.C. § 317 (a), (b). Consumer Watchdog is not engaged in any activity that would give rise to a possible infringement suit.”
Universal Elec., Inc. v. Universal Remote Control, Inc., 943 F. Supp. 2d 1028 (C.D. Cal. 2013). “35 U.S.C. § 317 . PTAB decisions will be appealed directly to the Federal Circuit.”
Synqor, Inc. v. Vicor Corp., 988 F.3d 1341 (Fed. Cir. 2021). “35 U.S.C. § 317 (b). As we held in Affinity Labs, these provisions are claim specific and in the nature of a claim preclusion bar rather than issue preclu- sion (collateral estoppel).”
Automated Merchandising Sys., Inc. v. Lee, 782 F.3d 1376 (Fed. Cir. 2015). “After AMS and Crane entered into a consent judgment, which dismissed the infringement suit and stated that the parties stipulated to the validity of the patents, AMS argued to the PTO that the reexaminations must stop because, under 35 U.S.C. § 317 (b) (2006), the consent…”
Function Media, L.L.C. v. Kappos, 508 F. App'x 953 (Fed. Cir. 2013). · cites it 2× “Under the version of 35 U.S.C. § 317 (b) that governs this appeal, the PTO is barred from maintaining an inter partes reexamination of a patent claim once a “final decision has been entered” in a civil action holding that the third-party requester failed to “sustain[ ] its…”
Show all 26 citing cases →
Annotations are extracted automatically from the opinions in the Syfert caselaw corpus and ranked by authority, recency, and treatment. Dots show Syfertize treatment of the citing case itself.