Toyota Motor Corporation v American Vehicular Sciences LLCDownload PDFPatent Trial and Appeal BoardApr 1, 201411874275 (P.T.A.B. Apr. 1, 2014) Copy Citation Trial@uspto.gov Paper 33 571-272-7822 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 IPR2013-00422 Patent 7,783,403 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 29. Also on March 26, 2014, the parties filed a copy of their written settlement agreement (Ex. 2003) covering U.S. Patent No. 7,783,403 (Ex. 1002, “the ’403 patent”) involved in this inter partes review, and a joint request to Case IPR2013-00422 Patent 7,783,403 -2- 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 30). The parties represent that there are no collateral agreements referred to in their settlement agreement. Paper 29, 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 ’403 patent, in the Eastern District of Texas, if the Board grants the motion to terminate the proceeding. Paper 29, 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. In the joint motion, the parties also indicate that no other litigation or proceeding involving the ’403 is pending or contemplated in the foreseeable future. Id. at 3. 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 Case IPR2013-00422 Patent 7,783,403 -3- 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. It is ORDERED that the joint motion to terminate IPR2013-00422 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 30) to have their settlement agreement (Ex. 2003) treated as business confidential information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) is granted. Case IPR2013-00422 Patent 7,783,403 -4- For PETITIONER Matthew Berkowitz Antony Pfeffer Thomas Makin mberkowitz@kenyon.com apfeffer@kenyon.com tmakin@kenyon.com For PATENT OWNER Thomas Wimbiscus Scott McBride Alejandro Menchaca Christopher Scharff twimbiscus@mcandrews-ip.com smcbride@mcandrews-ip.com amenchaca@mcandrews-ip.com cscharff@mcandrews-ip.com Copy with citationCopy as parenthetical citation