Mercedes-Benz USA, LLCv.Proximity Monitoring Innovations LLCDownload PDFPatent Trial and Appeal BoardSep 22, 201510454903 (P.T.A.B. Sep. 22, 2015) Copy Citation Trials@uspto.gov Paper 22 571-272-7822 Date: September 22, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE _______________ BEFORE THE PATENT TRIAL AND APPEAL BOARD _______________ MERCEDES-BENZ USA, LLC, DAIMLER NORTH AMERICA CORPORATION, and DAIMLER AG, Petitioner, v. PROXIMITY MONITORING INNOVATIONS LLC, Patent Owner. _______________ Case IPR2015-00397 Patent 6,958,701 B1 _______________ Before MICHAEL W. KIM, TRENTON A. WARD, and JASON J. CHUNG, Administrative Patent Judges. WARD, Administrative Patent Judge. DECISION Joint Motion to Terminate 37 C.F.R. § 42.5(a), 42.71(a), 42.72, 42.73 and 42.74 IPR2015-00397 Patent 6,958,701 B1 2 On September 8, 2015, Mercedes-Benz USA, LLC, Daimler North America Corporation, and Daimler AG (“Petitioner”) and Proximity Monitoring Innovations LLC (“Patent Owner”) filed a joint motion to terminate the case. Paper 21. Along with the motion, the parties filed a copy of a document they described as the written settlement agreement (Ex. 1011), as well as a joint request to treat the settlement agreement as business confidential information under the provisions of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). Paper 21, 2–3. The Board generally expects that a case “will terminate after the filing of a settlement agreement, unless the Board has already decided the merits.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012); see 37 C.F.R. § 42.72. The parties stated in their motion that they have settled the underlying dispute and reached an agreement to terminate this case. Paper 21, 1. Although the Board has instituted a trial in this case, the case is still in its early stages as Patent Owner has not filed a Patent Owner Response and Petitioner has not filed a Reply. In addition, Patent Owner’s Response is not currently due for more than a month. Upon consideration of the facts before us, we determine that it is appropriate to terminate this case without rendering either a decision to institute inter partes review or a final written decision. See 37 C.F.R. §§ 42.5(a), 42.71(a), 42.72, 42.73, 42.74. Accordingly, it is: ORDERED that the joint motion to terminate this case is GRANTED and the case is hereby terminated; and IPR2015-00397 Patent 6,958,701 B1 3 FURTHER ORDERED that the joint request of the parties that the settlement agreement (Ex. 1011) be treated as business confidential information, kept separate from the file of the involved patent, and made available only to Federal Government agencies on written request, or to any person on a showing of good cause, under the provisions of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), is GRANTED. IPR2015-00397 Patent 6,958,701 B1 4 PETITIONER: Celine Crowson Joseph Raffetto Raymond Kurz HOGAN LOVELLS US LLP celine.crowson@hoganlovells.com joseph.raffetto@hoganlovells.com raymond.kurz@hoganlovells.com PATENT OWNER: John Kasha KASHA LAW LLC john.kasha@kashalaw.com Dmitry Kheyfits KHEYFITS & MALONEY LLP dkheyfits@kheyfitsmaloney.com Copy with citationCopy as parenthetical citation