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[Curious Practitioner]

I am curious if anyone knows of any cases where a PTO action (reexamination, reissue, issue, etc.) affects the enforceability of settlement negotiations--perhaps based on a mistake of fact defense.

The recent Blackberry decisions got me to thinking...

If parties to a settlement negotiation have, for all intents and purposes, agreed on a settlement but have yet to formalize it in writing and sign the document, and the PTO issues some sort of action that is favorable to one party, can that party avoid the negotiated agreement--assuming the other party will argue a meeting of the minds even without a formalized document.

[Isaac]

This is pretty much a straight contract law question.

If the parties intended that the signing was a mere formality to immortalize, then they can be bound to a settlement once there is a meeting of the minds and the essential terms are in agreed to.   So yeah, the old "it depends" answer is appropriate.

In the case of the blackberry case it seems that the parties differ as to whether there actually is a settlement.

Some kinds of terms might be null and void if the patent is found to be invalid later.  A lump sum payment to settle things would not be invalidated, but maybe a royalty payment might end in some circumstances if the patent is found invalid.    If the patent turned out to be fraudulently obtained, maybe the entire agreement would be invalidated and all the ill gotten gains would have to be disgorged.

And of course the parties might agree that the deal is kaput if the patent is invalidated or if the moon sets in the east.