Mercedes-Benz USA, LLCv.Entry Systems, LLC

Patent Trial and Appeal Board

Oct 7, 2015

09131409 (P.T.A.B. Oct. 7, 2015)

Trials@uspto.gov Paper No. 10
571.272.7822 Entered: October 7, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
MERCEDES-BENZ USA, LLC,
Petitioner,
v.
ENTRY SYSTEMS, LLC,
Patent Owner.
_______________

Case IPR2015-01498
Patent 6,161,005
_______________

Before JAMESON LEE, MATTHEW R. CLEMENTS, and
JOHN F. HORVATH, Administrative Patent Judges.

HORVATH, Administrative Patent Judge.

ORDER
Granting Motion to Terminate
37 C.F.R. §§ 42.5(a), 42.71(a)

IPR2015-01498
Patent 6,161,005

2
On October 1, 2015, the parties filed a “Joint Motion to Terminate and
Keep Separate Under 35 U.S.C. § 317.” Paper 9. The parties’ Joint Motion
requests termination of this proceeding because the parties have reached an
agreement settling their dispute with respect to U.S. Patent No. 6,161,005
(“the ’005 Patent”). Id. at 1. The parties concurrently filed a true copy of
their Settlement Agreement (Ex. 1013), and request the Settlement
Agreement be treated as business confidential information, and kept separate
from the file of the ’005 Patent. Id. at 2.
This proceeding is at an early stage. Patent Owner has not filed a
preliminary response to the Petition for Inter Partes Review, and we have
neither considered the merits of the Petition nor instituted trial. The parties
jointly represent that the District Court has dismissed with prejudice Case
No. 2:14-cv-1090-JNA (E.D. Tex) concerning the ’005 Patent. Paper 9, 1–2.
Under the foregoing circumstances, we determine it is appropriate to
terminate this proceeding. See 37 C.F.R. §§ 42.5(a), 42.71(a). This paper
does not constitute a final written decision pursuant to 35 U.S.C. § 318(a).

Accordingly, it is hereby:
ORDERED that the Joint Motion to Terminate the Proceeding is
granted and this proceeding is terminated; and
FURTHER ORDERED that the Petition for Inter Partes Review of
U.S. Patent No. 6,161,005 is dismissed;
FURTHER ORDERED that the Joint Request to Treat the Settlement
Agreement as Business Confidential Information is granted; and
IPR2015-01498
Patent 6,161,005

3
FURTHER ORDERED that the Settlement Agreement (Ex. 1013) be
treated as business confidential information, and kept separate from the file
of U.S. Patent No. 6,161,005.

IPR2015-01498
Patent 6,161,005

4
For PETITIONER:

Gary Serbin
Raymond Kurz
Joseph Raffetto
HOGAN LOVELLS US LLP
gary.serbin@hoganlovells.com
raymond.kurz@hoganlovells.com
joseph.rafetto@hoganlovells.com

For PATENT OWNER:

Neil Massand
Hao Ni
NI, WANG & MASSAND, PLLC
nmassand@nilawfirm.com
hni@nilawfirm.com