Toyota Motor Corporation v American Vehicular Sciences LLC

Patent Trial and Appeal Board

Apr 1, 2014

11926192 (P.T.A.B. Apr. 1, 2014)

Trial@uspto.gov Paper 35
571-272-7822 Entered: April 1, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

TOYOTA MOTOR CORPORATION
Petitioner

v.

AMERICAN VEHICULAR SCIENCES LLC
Patent Owner

Case IPR2013-00423
Patent 8,041,483

Before JAMESON LEE, MICHAEL W. KIM, and
LYNNE E. PETTIGREW, Administrative Patent Judges.

KIM, Administrative Patent Judge.

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

On March 26, 2014, the parties filed a joint motion to terminate this inter
partes review with respect to both Petitioner (“Toyota”) and Patent Owner
(“AVS”). Paper 31. Also on March 26, 2014, the parties filed a copy of their
written settlement agreement (Ex. 2001) covering U.S. Patent No. 8,041,483 (Ex.
1001, “the ’483 patent”) involved in this inter partes review, and a joint request to
Case IPR2013-00423
Patent 8,041,483

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have their settlement agreement treated as business confidential information under
35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) (Paper 32). The parties represent that
there are no collateral agreements referred to in their settlement agreement. Paper
31, 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), “[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).” Toyota is the sole petitioner in this review. The Board has
discretion to terminate this review with respect to AVS as Patent Owner.
In the joint motion, the parties indicate that their settlement agreement
provides for dismissal of related civil litigation between Toyota and AVS,
involving the ’483 patent, in the Eastern District of Texas, if the Board grants the
motion to terminate the proceeding. Paper 31, 2-3. The motion identifies the civil
action as American Vehicular Sciences v. Toyota Motor Corp., et al., No. 6:12-cv-
00410 (E.D. Tex.) (filed June 25, 2012). Id.
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
as to both Toyota and AVS without rendering a final written decision See
35 U.S.C. § 317(a); 37 C.F.R. § 42.72.
Case IPR2013-00423
Patent 8,041,483

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It is
ORDERED that the joint motion to terminate IPR2013-00423 is granted,
and this inter partes review is hereby terminated as to all parties, including Toyota
as the Petitioner and AVS as the Patent Owner; and
FURTHER ORDERED that the parties’ joint request (Paper 32) to have
their settlement agreement (Ex. 2001) treated as business confidential information
under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) is granted.

For PETITIONER
Matthew Berkowitz
Antony Pfeffer
Thomas Makin
mberkowitz@kenyon.com
apfeffer@kenyon.com
tmakin@kenyon.com

For PATENT OWNER

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