UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`MERCEDES-BENZ USA LLC
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`Petitioner,
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`v.
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`ANTENNATECH LLC,
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`Listed Patent Owner.
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`____________
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`U.S. Patent No. 8,180,279
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`“Wireless Hotspot Arrangement”
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`____________
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`JOINT MOTION TO TERMINATE PROCEEDING PURSUANT TO 35
`U.S.C. § 317(A)
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`Inter Partes Review No. 2015-01576
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`99999-78098/7166638.1
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`
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`MERCEDES-BENZ USA LLC
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`Petitioner,
`
`v.
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`ANTENNATECH LLC,
`
`Listed Patent Owner.
`
`____________
`
`U.S. Patent No. 8,180,279
`
`“Wireless Hotspot Arrangement”
`
`____________
`
`JOINT MOTION TO TERMINATE PROCEEDING PURSUANT TO 35
`U.S.C. § 317(A)
`
`Inter Partes Review No. 2015-01576
`
`99999-78098/7166638.1
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`
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`Case IPR2015-01576
`Motion to Terminate Proceeding
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`Pursuant to 35 U.S.C. § 317(a), Petitioner Mercedes-Benz USA (“MBUSA” or
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`Petitioner) and Patent Owner AntennaTech LLC (“Antennatech” or Patent Owner)
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`jointly request termination of IPR2015-01576, which is directed to U.S. Patent No.
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`8,180,279 (the “279 Patent”).
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`I.
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`
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`Statement of Precise Relief Requested
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`Pursuant to 35 U.S.C. § 317(a), Petitioner and Patent Owner jointly request
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`termination of this inter partes review pursuant to settlement.
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`II.
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`Statement of Facts
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`
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`No decision on institution has been issued yet in this case. Further, Petitioner
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`and Patent Owner have reached an agreement to settle this inter partes review
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`proceeding. A “Joint Motion of Petitioner and Patent Owner to File Settlement
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`Agreement as Business Confidential Information Under 35 U.S.C. § 317 and 37
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`C.F.R. §42.74” is being filed concurrently with this Joint Motion to Terminate in
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`reference to sealing of the settlement agreement. See 35 U.S.C. 317(b) (requiring
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`parties to file agreements in writing with the Office).
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`A joint motion to terminate generally “must (1) include a brief explanation as
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`to why termination is appropriate; (2) identify all parties in any related litigation
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`involving the patents at issue; (3) identify any related proceedings currently before
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`the Office, and (4) discuss specifically the current status of each such related
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`litigation or proceeding with respect to each party to the litigation or proceeding.”
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`99999-78098/7166638.1
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`1
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`Case IPR2015-01576
`Motion to Terminate Proceeding
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`Heartland Tanning, Inc. v. Sunless, Inc., IPR2014-00018, Paper 26 at 2 (PTAB Jul.
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`28, 2014).
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`
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`In response to the first requirement, termination is appropriate in this case
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`because the parties have settled their dispute in the related district court action. A
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`“Joint Motion of Petitioner and Patent Owner to File Settlement Agreement as
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`Business Confidential Information Under 35 U.S.C. § 317 and 37 C.F.R. §42.74” is
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`being filed concurrently with this Joint Motion to Terminate in reference to sealing of
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`the settlement agreement. In response to the second requirement, the Petitioner and
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`the Patent Owner are the parties to that related district court action, case no. 1:14-cv-
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`00949-GMS (D. Del.). Petitioner and Patent owner understand that the ‘279 patent
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`has been asserted in other district court litigations where Patent Owner is not a
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`named party. In response to the third requirement, Petitioner and Patent Owner are
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`aware of a pending ex parte reexamination of the ‘279 Patent, which has been
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`assigned control number 90/013,460 (the “’460 reexamination”). In response to the
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`fourth requirement, with respect to proceedings before the Patent Office, the ‘460
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`reexamination was requested by Volkswagen Group of America, Inc., was instituted
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`on claim 6 of the ‘279 patent, and currently has a non-final action pending on claim 6
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`of the ‘279 patent. There has been no action yet with respect to the instant
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`proceeding, IPR2015-01576. With respect to the district court litigation between
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`99999-78098/7166638.1
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`2
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`Case IPR2015-01576
`Motion to Terminate Proceeding
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`Petitioner and Patent Owner, the court has dismissed that action pursuant to Fed. R.
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`Civ. P. 41(a). 1:14-cv-00949-GMS (D. Del.) at Dkt. 24.
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`III. Argument
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`
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`The Board should terminate this case as the parties jointly request, for the
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`following reasons. First, Petitioner and Patent Owner have met the statutory
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`requirement that they file a “joint request” to terminate before the office “has
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`decided the merits of the proceeding.” 35 U.S.C. § 317(a). Under section 317(a), an
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`inter partes review shall be terminated upon such joint request “unless the Office has
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`decided the merits of the proceeding before the request for termination is filed.”
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`There are no other preconditions of 35 U.S.C. § 317(a). And in this proceeding, a
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`decision on initiation is still months away.
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`
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`Second, the parties have reached a settlement as to all the disputes in this
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`proceeding and as to the ‘279 Patent. A copy of the agreement is filed concurrently
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`herewith. See Ex. 2001. The parties further jointly certify that there are no other
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`written or oral agreements or understandings, including any collateral agreements,
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`between them, including but not limited to licenses, covenants not to sue,
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`confidentiality agreements, payment agreements, or other agreements of any kind,
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`that are made in connection with or in contemplation of, the termination of the
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`instant proceeding.
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`99999-78098/7166638.1
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`3
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`Case IPR2015-01576
`Motion to Terminate Proceeding
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`Third, a termination of this proceeding will preserve the Board’s resources and
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`obviate the need for any more Board involvement in this matter.
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`IV. Statement of Patent Owner Regarding Assignment of Ownership and
`Authority of Representation
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`
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`Pursuant to 37 C.F.R. 3.73(c), Patent Owner identifies Reel/Frame number
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`026742/0311 and 032661/0616 regarding assignment of the ‘279 Patent from the
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`inventors to Chester Holdings, LLC, and from Chester Holdings, LLC to Patent
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`Owner, respectively. Patent Owner has therefore specified where documentary
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`evidence of a chain of title from the original owner to the Patent Owner is recorded
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`in the assignment records of the Patent Office, pursuant to 37 C.F.R. 3.73(c).
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`V. Conclusion
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`
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`For the foregoing reasons, Petitioner and Patent Owner respectfully request
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`termination of this inter partes review of the ‘279 Patent.
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`99999-78098/7166638.1
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`4
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`Case IPR2015-01576
`Motion to Terminate Proceeding
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`Respectfully submitted,
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`/Jim Glass/
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`
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`Jim Glass
`Quinn Emanuel Urquhart & Sullivan
`LLP
`51 Madison Ave, 22nd Fl.
`New York, NY 10010
`Tel:
`(212) 849-7000
`Fax: (212) 849-7100
`Reg. No. 46729
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`Attorney for Petitioner
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`
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`/Shekhar Vyas/
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`
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`Shekhar Vyas, Reg. No. 46,166
`Stamoulis & Weinblatt LLC
`302 Washington Street #150-2028
`San Diego, CA 92103
`Telephone: (302) 999-1540
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`Attorney for Patent Owner
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`Dated: September 15, 2015
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`99999-78098/7166638.1
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`5
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`Case IPR2015-01576
`Motion to Terminate Proceeding
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`CERTIFICATE OF SERVICE
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`The undersigned certifies service pursuant to 37 C.F.R. §§ 42.6(e) and 42.105
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`on the Patent Owner on a CD by UPS Next Day Air of a copy of this Joint Motion to
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`Terminate Proceedings and supporting materials at the correspondence address of
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`record for the ’279 patent:
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`
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`Donald N. Halgren
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`35 Central St.
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`Manchester, MA 01944
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`and via electronic mail to litigation counsel for the patent owner:
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`
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`Richard Charles Weinblatt
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`Stamoulis & Weinblatt LLC
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`Two Fox Point Centre
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`6 Denny Road, Suite 307
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`Wilmington, DE 19809
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`302-999-1540
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`Email: weinblatt@swdelaw.com
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`Dated: September 15, 2015
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` By: /Jim Glass/
`Jim Glass
`(Reg. No. 46729)
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`99999-78098/7166638.1
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