Mercedes-Benz USA, LLCv.Z-Dimensional, LLC

Patent Trial and Appeal Board

Jan 5, 2015

11681760 (P.T.A.B. Jan. 5, 2015)

Trials@uspto.gov Paper 11
Tel: 571-272-7822 Entered: January 5, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

MERCEDES-BENZ USA, LLC,
Petitioner,

v.

Z-DIMENSIONAL, LLC,
Patent Owner.
____________

Case IPR2014-01521
Patent 7,729,530 B2

Before JUSTIN T. ARBES, DAVID C. McKONE, and PETER P. CHEN,
Administrative Patent Judges.

ARBES, Administrative Patent Judge.

JUDGMENT
Termination of the Proceeding
37 C.F.R. § 42.72
IPR2014-01521
Patent 7,729,530 B2

2

On December 31, 2014, the parties filed a joint motion (Paper 10) to
terminate the instant proceeding on the basis of a settlement reached by the
parties. See 35 U.S.C. § 317(a); 37 C.F.R. § 42.72. The parties also filed a
copy of their written settlement agreement (Exhibit 1009) and requested in
the joint motion that the settlement agreement be treated as business
confidential information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
The instant proceeding is still in the preliminary stages. Patent Owner
did not file a preliminary response by the three-month deadline, see Paper 4
at 2, and we have not yet determined whether to institute an inter partes
review. The parties further represent that they have agreed to dismissal with
prejudice of the pending district court case between the parties involving
U.S. Patent No. 7,729,530 B2 (“the ’530 patent”). See Paper 10 at 1–2
(citing Ex. 1009). The district court’s electronic docketing system indicates
that the case was dismissed with prejudice on December 30, 2014. Although
the parties identify a number of other pending district court cases where the
’530 patent is being asserted against other defendants, see Paper 1 at 4–5;
Paper 9 at 1, given the status of this proceeding and the parties’ agreement,
we determine that it is appropriate to terminate the proceeding without
rendering a final written decision under 37 C.F.R. § 42.72.
In consideration of the foregoing, it is hereby:
ORDERED that the parties’ joint request that the settlement
agreement (Exhibit 1009) be treated as business confidential information,
kept separate from the file of U.S. Patent No. 7,729,530 B2, and made
available only to Federal Government agencies on written request, or to any
person on a showing of good cause, under 35 U.S.C. § 317(b) and 37 C.F.R.
§ 42.74(c), is granted; and
IPR2014-01521
Patent 7,729,530 B2

3

FURTHER ORDERED that the joint motion to terminate the
proceeding is granted and this proceeding is hereby terminated.
1

1
The ’530 patent previously was challenged in Case IPR2014-00841. The
parties are referred to our decision in that proceeding regarding requests to
expunge settlement agreements filed pursuant to 35 U.S.C. § 317(b).
See IPR2014-00841, Paper 15.
IPR2014-01521
Patent 7,729,530 B2

4

PETITIONER:

Celine Jimenez Crowson
Raymond A. Kurz
Joseph J. Raffetto
HOGAN LOVELLS US LLP
celine.crowson@hoganlovells.com
raymond.kurz@hoganlovells.com
joseph.raffetto@hoganlovells.com

PATENT OWNER:

Ronald W. Burns
rburns@burnsiplaw.com

Kenneth Emanuelson
ROSS JOYNER PLLC
kemanuelson@rossjoynerlaw.com