Nearmap US, Inc. v. Eagle View Technologies, Inc.

On sua sponte Director Review, the Director vacated the Board's Final Written Decision and its institution decision and denied institution, exercising discretion to de-institute the IPR. The Director reasoned that, given a prior IPR on the same patent in which the claims were found not unpatentable based on objective indicia evidence (affirmed by the Federal Circuit), and the Petitioner's settlement with the Patent Owner, maintaining the IPR would waste Office resources, risk inconsistent outcomes, and impose added expense on the Patent Owner despite the settled dispute. Even after a final written decision issues, the Director may de-institute an IPR and deny institution on public interest grounds, particularly where the petitioner has settled and a prior IPR on the same patent was resolved in the patent owner's favor and affirmed. Practitioners should note that settlement plus a prior affirmed determination can support vacatur of an adverse FWD, including after an Office-requested remand from the Federal Circuit. Decision under review: the Board's Final Written Decision (Paper 51) finding claims of Patent 9,135,737 B2 unpatentable on different prior art after determining that Patent Owner's objective indicia evidence lacked a nexus to the challenged claims (Decision 24-27). Background: this was the second IPR against the patent. In the first IPR (IPR2016-00592), the Board found no unpatentability based on the strength of the objective indicia evidence, and the Federal Circuit affirmed. Petitioner then settled in this IPR and stopped participating. The Office intervened in the appeal after settlement and obtained a remand. Reasoning: citing Magnolia Med. Techs., Inc. v. Kurin, Inc., IPR2026-00097, Paper 17 (Director May 14, 2026) (precedential), the Director considers public interest factors such as efficient administration of the Office and integrity of the patent system to ensure fairness, efficiency, and predictability. He found that maintaining this IPR would be an inefficient use of Office resources. The Director found that maintaining the IPR would increase the risk of inconsistent outcomes and create additional expense for Patent Owner even though the underlying dispute had settled, so justice is better served by vacating and denying institution. Order: the Final Written Decision (Paper 51) is vacated; the decision granting institution (Paper 10) is vacated; the Petition is denied and no trial is instituted. KEY QUOTE: "Maintaining this IPR now would result in an increased risk of inconsistent outcomes and create additional expenses for Patent Owner even though the underlying dispute has now settled." (Paper 57, p. 3)