Mercedes-Benz USA, LLCv.American Vehicular Sciences LLC

Patent Trial and Appeal Board

Jan 30, 2015

10234063 (P.T.A.B. Jan. 30, 2015)

Trials@uspto.gov Paper 27
571.272.7822 Date: January 30, 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 IPR2014-00644
Patent 6,746,078 B2
_______________

Before JAMESON LEE, BARBARA A. PARVIS, and
GREGG I. ANDERSON, Administrative Patent Judges.

PARVIS, Administrative Patent Judge.

ORDER
Termination of Proceeding
35 U.S.C. § 317(a) and 37 C.F.R. § 42.72

IPR2014-00644
Patent 6,746,078 B2

2

On January 16, 2015, a joint motion to terminate this inter partes
review was filed by Petitioner Mercedes-Benz USA, LLC (“Mercedes-
Benz”) and Patent Owner, American Vehicular Sciences LLC (“AVS”).
Paper 24. Also, on January 16, 2015, Mercedes-Benz and AVS filed a copy
of their written settlement agreement covering Patent 6,746,078 involved in
this inter partes review (Ex. 2001). Mercedes-Benz and AVS also filed a
joint request to have their settlement agreement treated as confidential
business information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
Paper 25. Mercedes-Benz and AVS represent that the settlement agreement
filed as Exhibit 2001 is a true and accurate copy of their settlement
agreement. Paper 24.
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 Mercedes-Benz is met.
Under 35 U.S.C. § 317(a), “If 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 is the sole petitioner in this
review. The Board has discretion to terminate this review with respect to
AVS as Patent Owner.
Mercedes-Benz and AVS indicate that related civil litigation between
Mercedes-Benz and AVS involving Patent 6,746,078 has already been
dismissed. Paper 24. The related civil litigation is identified as American
Vehicular Sciences LLC v. Mercedes-Benz U.S., Int’l., Inc., 6:13-cv-00307
(E.D. Tex.). Id.
IPR2014-00644
Patent 6,746,078 B2

3

The joint motion to terminate states that no other litigation or
proceeding involving Patent 6,746,078, is pending. Paper 24. Additionally,
no other petitions have been filed for inter partes review of Patent 6,746,078
and there is no pending motion by any third party for joinder with this inter
partes review.
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 both as to Mercedes-Benz 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 IPR2014-00644 is
granted, and this inter partes review is hereby terminated; and
FURTHER ORDERED that the Mercedes-Benz and AVS’s joint
request (Paper 25) to have their settlement agreement (Exhibit 2001) treated
as business confidential information under 35 U.S.C. § 317(b) and 37 C.F.R.
§ 42.74(c) is also granted.

IPR2014-00644
Patent 6,746,078 B2

4

For PETITIONER:

Scott Doyle
Jonathan DeFosse
scott.doyle@shearman.com
jonathan.defosse@shearman.com

For PATENT OWNER:

Thomas J. Wimbiscus
Scott P. McBride
Stephanie Samz
twimbiscus@mcandrews-ip.com
smcbride@mcandrews-ip.com
ssamz@mcandrews-ip.com