PTAB Encourages Parties to Consider Alternative Dispute Resolution

Written by Adam Shartzer

On April 20, 2015, the Board instituted inter partes review for Tiffany and Co. in IPR2015-00024. Concurrent with institution, the Board issued a scheduling order. Paper No. 8. Notably, the scheduling order includes a section regarding an Alternative Dispute Resolution ("ADR") Statement, which is due approximately two weeks after the Initial Conference Call. Id. at 3.

The ADR Statement section indicates that "parties are encouraged to discuss promptly alternative means for resolving their disputes regarding the subject matter of this proceeding."Id. It further notes that the "petitioner is encouraged to notify the Board, by the due date . . . that the parties have conferred regarding alternative dispute resolution and whether the parties have reached any agreements."Id.

The Board is encouraging parties to engage in a meet-and-confer process to discuss the viability of (and perhaps engage in) ADR. It is important to note that for now the Board, in its own words, is only "encouraging" this process. The Board likely encourages the process in the absence of an official rule requiring the parties engage in an ADR process.

At this time, the Board provides no formal guidance regarding the scope or content of an ADR statement. Petitioners seeking to comply with the Board's ADR statement deadline may consider the procedures outlined by the United States District Court for the Northern District of California. There, patent litigants are encouraged to engage in some form of ADR and must certify to their review and acknowledgment of the district's ADR rules. It appears that the Board is perhaps engaging in a "trial" period for ADR procedures before engaging in formal rule-making. With the Board on pace to receive nearly 2,000 IPR and CBM petitions in FY2015, post-institution ADR may prove fruitful in reducing the Board's workload.