Mercedes-Benz USA, LLCv.American Vehicular Sciences LLCDownload PDFPatent Trial and Appeal BoardJan 30, 201510234063 (P.T.A.B. Jan. 30, 2015) Copy Citation Trials@uspto.gov Paper 27 571.272.7822 Date: January 30, 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 IPR2014-00644 Patent 6,746,078 B2 _______________ Before JAMESON LEE, BARBARA A. PARVIS, and GREGG I. ANDERSON, Administrative Patent Judges. PARVIS, Administrative Patent Judge. ORDER Termination of Proceeding 35 U.S.C. § 317(a) and 37 C.F.R. § 42.72 IPR2014-00644 Patent 6,746,078 B2 2 On January 16, 2015, a joint motion to terminate this inter partes review was filed by Petitioner Mercedes-Benz USA, LLC (“Mercedes- Benz”) and Patent Owner, American Vehicular Sciences LLC (“AVS”). Paper 24. Also, on January 16, 2015, Mercedes-Benz and AVS filed a copy of their written settlement agreement covering Patent 6,746,078 involved in this inter partes review (Ex. 2001). Mercedes-Benz and AVS also filed a joint request to have their settlement agreement treated as confidential business information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). Paper 25. Mercedes-Benz and AVS represent that the settlement agreement filed as Exhibit 2001 is a true and accurate copy of their settlement agreement. Paper 24. 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 Mercedes-Benz 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. Mercedes-Benz and AVS indicate that related civil litigation between Mercedes-Benz and AVS involving Patent 6,746,078 has already been dismissed. Paper 24. The related civil litigation is identified as American Vehicular Sciences LLC v. Mercedes-Benz U.S., Int’l., Inc., 6:13-cv-00307 (E.D. Tex.). Id. IPR2014-00644 Patent 6,746,078 B2 3 The joint motion to terminate states that no other litigation or proceeding involving Patent 6,746,078, is pending. Paper 24. Additionally, no other petitions have been filed for inter partes review of Patent 6,746,078 and 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. It is ORDERED that the joint motion to terminate IPR2014-00644 is granted, and this inter partes review is hereby terminated; and FURTHER ORDERED that the Mercedes-Benz and AVS’s joint request (Paper 25) 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. IPR2014-00644 Patent 6,746,078 B2 4 For PETITIONER: Scott Doyle Jonathan DeFosse scott.doyle@shearman.com jonathan.defosse@shearman.com For PATENT OWNER: Thomas J. Wimbiscus Scott P. McBride Stephanie Samz twimbiscus@mcandrews-ip.com smcbride@mcandrews-ip.com ssamz@mcandrews-ip.com Copy with citationCopy as parenthetical citation