Mercedes-Benz USA, LLCv.American Vehicular Sciences LLC

Patent Trial and Appeal Board

Jan 15, 2015

08474786 (P.T.A.B. Jan. 15, 2015)

Trials@uspto.gov Paper 24
Tel: 571-272-7822 Entered: January 15, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

MERCEDES-BENZ USA, LLC,
Petitioner,

v.

AMERICAN VEHICULAR SCIENCES LLC,
Patent Owner.

Case IPR2014-00647
Patent 5,845,000

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

IPR2014-00647
Patent 5,845,000

2
I. DISCUSSION
On November 19, 2014, pursuant to 35 U.S.C. § 317, the parties filed
an authorized joint motion to terminate the above-captioned proceeding
(Paper 17), 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
18).
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).” Mercedes-Benz USA, LLC 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 reached
agreement to terminate this proceeding, and have memorialized the parties’
agreement with respect to termination of the inter partes review involving
the 5,845,000 patent (“the ’000 patent”) in a settlement agreement. Paper
IPR2014-00647
Patent 5,845,000

3
17, 1; Ex. 2001. The joint motion to terminate indicates that there are no
collateral side agreements referred to in the settlement agreement. Paper 17,
1. The joint motion to terminate also states 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 17, 1-2.
At the present stage of the proceeding, Patent Owner has not filed a
Patent Owner Response and has submitted no declarations. Paper 17, 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.
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.

IPR2014-00647
Patent 5,845,000

4
FOR PETITIONER:

Scott W. Doyle
Jonathan R. DeFosse
Shearman & Sterling LLP
scott.doyle@shearman.com
jonathan.defosse@shearman.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