American Honda Motor Co., Inc.v.American Vehicular Sciences LLC

Patent Trial and Appeal Board

Jan 16, 2015

11369088 (P.T.A.B. Jan. 16, 2015)

Trials@uspto.gov Paper 18
571-272-7822 Entered: January 15, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

AMERICAN HONDA MOTOR CO., INC.,
Petitioner,

v.

AMERICAN VEHICULAR SCIENCES LLC,
Patent Owner.
____________

Case IPR2014-00617
Patent 7,413,048
____________

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

KIM, Administrative Patent Judge.

JUDGMENT
Termination of the Proceeding
37 C.F.R. § 42.72
The parties have requested that the above-captioned proceeding be
terminated pursuant to a settlement. The Board authorized the parties to file a joint
request to terminate the above-captioned proceeding.
On December 31, 2014, and pursuant to 35 U.S.C. § 317, the parties filed a
joint motion to terminate the above-captioned proceeding (Paper 14), along with a
copy of the settlement agreement (Ex. 2001). The parties concurrently filed a joint
IPR2014-00617
Patent 7,413,048

2
request to file the settlement agreement as business confidential information, to be
kept separate from the patent file pursuant to 35 U.S.C. § 317(b) and 37 C.F.R.
§ 42.74(c) (Paper 15).
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).” American Honda Motor Co., Inc. is the sole petitioner in
this review. The Board has discretion to terminate this review with respect to
American Vehicular Sciences LLC as Patent Owner.
The joint motion to terminate indicates that the parties have settled their
dispute, have reached agreement to terminate this proceeding, and have
memorialized the parties’ agreement with respect to termination of the underlying
litigation involving the ’048 patent in a settlement agreement. Paper 14, 1; Ex.
2001. The joint motion to terminate indicates also that there are no collateral side
agreements referred to in the settlement agreement. Paper 14, 1. The joint motion
to terminate identifies the following civil action regarding the ’048 patent:
American Vehicular Sciences LLC v. American Honda Motor Co., Inc., et al., No.
2:14-CV-13253 (E.D. Mich.). Paper 14, 3. The joint motion to terminate indicates
that all claims concerning the ’048 patent between the parties in the
aforementioned civil action will be dismissed with prejudice as a result of the
settlement agreement. Paper 14, 2-3. The joint motion to terminate indicates
further that if the Board elects to continue the review in any respect without the
IPR2014-00617
Patent 7,413,048

3
Petitioner, the Patent Owner will not participate in any way in the review. Paper
14, 1-2.
Petitioner filed a petition on April 11, 2014, and Patent Owner filed a waiver
of preliminary response to the Petition on July 18, 2014. The Board instituted inter
partes review on September 18, 2014. Patent Owner has not filed a Patent Owner
Response, and no depositions have been taken. Paper 14, 1. This proceeding has
not resulted in a final decision on the merits.
Based on the facts of the case, it is appropriate to terminate the proceeding
as to both Petitioner and Patent Owner. Therefore, the joint motion to terminate
and the joint motion to file the settlement agreement as business confidential
information are granted.
Accordingly, it is
ORDERED that the joint motion to file the settlement agreement as business
confidential information, to be kept separate from the patent file, is granted;
FURTHER ORDERED that the joint motion to terminate the proceeding is
granted; and
FURTHER ORDERED that the proceeding is terminated.

IPR2014-00617
Patent 7,413,048

4
For PETITIONER:

Joseph Melnik
jmelnik@jonesday.com

Joseph Beauchamp
jbeauchamp@jonesday.com

For PATENT OWNER

Thomas Wimbiscus
twimbiscus@mcandrews-ip.com

Scott McBride
smcbride@mcandrews-ip.com

Christopher Scharff
cscharff@mcandrews-ip.com