Mercedes-Benz USA, LLCv.American Vehicular Sciences LLC

Patent Trial and Appeal Board

Dec 12, 2014

10188673 (P.T.A.B. Dec. 12, 2014)

Trial@uspto.gov Paper 22
571-272-7822 Entered: December 12, 2014

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 IPR2014-00645
Patent 6,738,697 B2

Before JAMESON LEE, BARBARA A. PARVIS, and
GREGG I. ANDERSON, Administrative Patent Judges.

LEE, Administrative Patent Judge.

ORDER
Termination of Proceeding
37 C.F.R. § 42.72

On November 19, 2014, the parties filed a Joint Motion to Terminate
Proceeding, pursuant to 35 U.S.C. § 317, with respect to both Petitioner
(“Mercedes-Benz”) and Patent Owner (“AVS”). Paper 19. Also on November 19,
2014, the parties filed a copy of their written settlement agreement (Ex. 2001)
covering U.S. Patent No. 6,738,697 (“the ’697 patent”) involved in this inter partes
review, and a joint request to have their settlement agreement treated as
Case IPR2014-00645
Patent 6,738,697 B2

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confidential business information under 35 U.S.C. § 317(b) and 37 C.F.R.
§ 42.74(c) (Paper 20). The parties represent that there are no collateral agreements
referred to in their settlement agreement. Paper 19, 1.
Under 35 U.S.C. § 317(a), “[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.” The requirement for
terminating review with respect to Petitioner is met.
Under 35 U.S.C. § 317(a), “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).” Mercedes-Benz is the sole petitioner in this review. The
Board has discretion to terminate this review with respect to AVS as Patent Owner.
In a conference call held on December 11, 2014, among respective counsel
for the parties and Judges Lee, Parvis, and Anderson, the parties indicated that all
related civil actions between Mercedes-Benz and AVS, involving the ’697 patent,
have been dismissed, including American Vehicular Sciences LLC v. Mercedes-
Benz U.S. Intl., Inc., No. 6:13-cv-00310 (E.D. Tex.). The joint motion identifies
other related actions involving Patent No. 6,738,697, and defendants other than
Mercedes-Benz, which still remain pending. Paper 19, 2–3. On this record, there
is no pending motion by any third party for joinder with this inter partes review.
AVS has not yet filed a Patent Owner Response in this proceeding. The
Board determines that in these circumstances it is appropriate to terminate review
both as to Mercedes-Benz and AVS without rendering a final written decision See
35 U.S.C. § 317(a); 37 C.F.R. § 42.72.
Case IPR2014-00645
Patent 6,738,697 B2

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It is
ORDERED that the joint motion to terminate IPR2014-00645 is granted,
and this inter partes review is hereby terminated as to all parties including
Mercedes-Benz as the Petitioner and AVS as the Patent Owner; and
FURTHER ORDERED that the parties’s joint request (Paper 20) to have
their settlement agreement (Exhibit 2001) treated as business confidential
information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) is also granted.

For PETITIONER
Scott Doyle
Jonathan DeFosse
scott.doyle@shearman.com
jonathan.defosse@shearman.com

For PATENT OWNER

Thomas Wimbiscus
Scott McBride
Christopher Scharff
twimbiscus@mcandrews-ip.com
smcbride@mcandrews-ip.com
cscharff@mcandrews-ip.com