`Tel: 571-272-7822
`
`
`
`
`
`
`Paper 24
`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
`
`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
`
`2
`
`
`
`IPR2014-00647
`Patent 5,845,000
`
`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.
`
`
`
`
`
`
`3
`
`
`
`IPR2014-00647
`Patent 5,845,000
`
`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
`
`
`
`
`
`
`
`
`
`4
`
`
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