Mercedes-Benz USA, LLCv.American Vehicular Sciences

Patent Trial and Appeal Board

Jan 15, 2015

10302105 (P.T.A.B. Jan. 15, 2015)

Trials@uspto.gov Paper 25
571-272-7822 Entered: January 15, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

MERCEDES-BENZ USA, LLC,
Petitioner,

v.

AMERICAN VEHICULAR SCIENCES LLC,
Patent Owner.
____________

Case IPR2014-00646
Patent 6,772,057 B2
____________

Before JAMESON LEE, TREVOR M. JEFFERSON, and
LYNNE E. PETTIGREW, Administrative Patent Judges.

PETTIGREW, Administrative Patent Judge

JUDGMENT
Termination of the Proceeding
37 C.F.R. § 42.72

On November 19, 2014, pursuant to 35 U.S.C. § 317, the parties filed
an authorized joint motion to terminate the above-captioned proceeding
(Paper 18), along with a true copy of the written settlement agreement
(Ex. 2001). The parties concurrently filed a joint request to file the
Case IPR2014-00646
Patent 6,772,057 B2

2
settlement agreement as business confidential information, to be kept
separate from the patent file pursuant to 35 U.S.C. § 317(b) and 37 C.F.R.
§ 42.74(c) (Paper 19).
Petitioner meets the requirements for terminating review with respect
to Petitioner as the Office has not decided the merits of the proceeding under
35 U.S.C. § 317(a), which states that “[a]n inter partes review instituted
under this chapter shall be terminated with respect to any petitioner upon the
joint request of the petitioner and patent owner, unless the Office has
decided the merits of the proceeding before the request for termination is
filed.”
Under 35 U.S.C. § 317(a), “[i]f 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).” Mercedes-Benz USA, LLC is the
sole petitioner in this review. The Board has discretion to terminate this
review with respect to American Vehicular Sciences LLC as Patent Owner.
The joint motion to terminate indicates that the parties have reached
agreement to terminate this proceeding, and have memorialized the parties’
agreement with respect to termination of the inter partes review involving
the 6,772,057 patent in a settlement agreement. Paper 18, 1; Ex. 2001. The
joint motion to terminate indicates that there are no collateral agreements
referred to in the settlement agreement. Paper 18, 1. The joint motion to
terminate also states that if the Board elects to continue the review in any
respect without the Petitioner, the Patent Owner will not participate in any
way in the review. Id. at 1–2.
Case IPR2014-00646
Patent 6,772,057 B2

3
At the present stage of the proceeding, Patent Owner has not filed a
Patent Owner Response and has submitted no declarations. Id. at 1. In
addition, no depositions have been taken. Id. This proceeding has not
resulted in a final decision on the merits.
Based on the facts of the case, it is appropriate to terminate the
proceeding as to both Petitioner and Patent Owner. Therefore, the joint
motion to terminate and the joint motion to file the settlement agreement as
business confidential information are granted.
ORDER
Accordingly, it is
ORDERED that the joint motion to file the settlement agreement as
business confidential information, to be kept separate from the patent file, is
granted;
FURTHER ORDERED that the joint motion to terminate the
proceeding is granted; and
FURTHER ORDERED that the proceeding is terminated.

Case IPR2014-00646
Patent 6,772,057 B2

4
FOR PETITIONER:
Scott W. Doyle
Jonathan R. DeFosse
Shearman & Sterling LLP
scott.doyle@shearman.com
jonathan.defosse@shearman.com

FOR PATENT OWNER:
Thomas J. Wimbiscus
Scott P. McBride
Christopher M. Scharff
McAndrews Held & Malloy
twimbiscus@mcandrews-ip.com
smcbride@mcandrews-ip.com
cscharff@mcandrews-ip.com