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

Patent Trial and Appeal Board

Jan 15, 2015

11877118 (P.T.A.B. Jan. 15, 2015)

Trials@uspto.gov Paper 18
Tel: 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 IPR2014-00619
Patent 7,976,060

Before JAMESON LEE, TREVOR M. JEFFERSON, and
LYNNE E. PETTIGREW, Administrative Patent Judges.

JEFFERSON, Administrative Patent Judge.

JUDGMENT
Termination of the Proceeding
37 C.F.R. § 42.72

IPR2014-00619
Patent 7,976,060

2
I. DISCUSSION
On December 31, 2014, pursuant to 35 U.S.C. § 317, the parties filed
an authorized joint motion to terminate the above-captioned proceeding
(Paper 14), along with a true copy of the written settlement agreement (Ex.
2001). The parties concurrently filed a joint 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).
Petitioner meets the requirements for terminating review with respect
to Petitioner as the Office has not decided the merits of the proceeding under
35 U.S.C. § 317(a), which states that “[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.”
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 also 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 7,976,060 patent (“the ’060 patent”)in
IPR2014-00619
Patent 7,976,060

3
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 ’060 patent: American
Vehicular Sciences LLC v. American Honda Motor Co., Inc., et al., No.
2:14-CV-13252 (E.D. Mich.). Paper 14, 3. The joint motion to terminate
indicates that all claims concerning the ’060 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 Petitioner, the Patent Owner will not participate in any way in
the review. Paper 14, 1-2.
At the present stage of the proceeding, Patent Owner has not filed a
Patent Owner Response and has submitted no declarations. Paper 14, 1. In
addition, no depositions have been taken. Id. 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.

IPR2014-00619
Patent 7,976,060

4
II. ORDER
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.

IPR2014-00619
Patent 7,976,060

5
FOR PETITIONER:

Joseph Melnik
Joseph M. Beauchamp
H. Albert Liou
Jones Day
jmelnik@jonesday.com
jbeauchamp@jonesday.com
aliou@jonesday.com

FOR PATENT OWNER:

Thomas J. Wimbiscus
Scott P. McBride
Christopher M. Scharff
McAndrews Held & Malloy
twimbiscus@mcandrews-ip.com
smcbride@mcandrews-ip.com
cscharff@mcandrews-ip.com