`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MERCEDES BENZ USA, LLC,
`Petitioner,
`
`v.
`
`DIGITAL STREAM IP, LLC,
`Patent Owner.
`____________
`Case IPR2017-00834
`Patent 8,265,545
`____________
`
`PATENT OWNER’S MOTION & CERTIFICATION
`UNDER 37 C.F.R. § 42.100(b) REQUESTING EXPIRED
`PATENT CLAIM CONSTRUCTION
`
`
`
`1
`
`
`
`
`
`
`
`
`Notice of Request for Relief
`
`Pursuant to 37 C.F.R. § 42.100(b), Patent Owner moves for a district
`
`court-type claim construction with respect to the challenged claims of U.S.
`
`Patent 8,265,545.
`
`
`
`
`
`Material Facts
`
`1. U.S. Patent 8,265,545, the patent challenged in this proceeding, will
`
`expire July 2, 2017, within 18 months of the NOTICE OF FILING DATE
`
`ACCORDED TO PETITION AND TIME FOR FILING PATENT OWNER
`
`PRELIMINARY RESPONSE, Paper No. 4, mailed February 27, 2017, in
`
`this proceeding.
`
`
`
`2. Petitioner, MERCEDES BENZ USA, LLC, filed its petition on
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`February 1, 2017, acknowledging that U.S. Patent 8,265,545 may expire
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`prior to the Board rendering a final written decision in this proceeding. Pet.
`
`at 7.
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`
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`3. Petitioner alleges, “For this petition the outcome would be the same
`
`under either [a broadest reasonable interpretation (‘BRI’) or Phillips]
`
`
`
`2
`
`
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`standard, as Mercedes’ [] claim constructions are proper under either the
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`BRI or a Phillips-type claim interpretation.” Pet. at 7.
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`
`
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`Certification
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`
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`Patent Owner, by and through its undersigned attorney of record,
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`certifies that U.S. Patent 8,265,545 will expire July 2, 2017.
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`
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`Requested Relief
`
`Patent Owner respectfully submits that the requirements of Rule
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`42.100(b) are met, and requests that in this proceeding the Board construe
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`the claims of U.S. Patent 8,265,545 in accordance with the meaning they
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`would have to a person of ordinary skill in the art at the time of the alleged
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`invention considering the intrinsic evidence, and, if appropriate, extrinsic
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`evidence. Phillips v. AWH Corp., 415 F.3d 1303, 1314-18 (Fed. Cir. 2005).
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`
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`Discussion
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`
`
`Pursuant to 37 C.F.R. § 42.100(b), a Patent Owner “may request a
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`district court-type claim construction approach to be applied if [the Patent
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`Owner] certifies that the involved patent will expire within 18 months from
`
`the entry of the Notice of Filing Date Accorded to Petition. The request,
`
`
`
`3
`
`
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`accompanied by [the Patent Owner’s] certification, must be made in the
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`form of a motion under § 42.20, within 30 days from the filing of the
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`petition.” The instant motion is being filed within 30 from the filing of the
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`petition (February 1, 2017), and Patent Owner has certified that the involved
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`patent, US Pat. 8,265,545, will expire July 2, 2017, within 18 months from
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`the entry of the Notice of Filing Date Accorded to Petition on February 27,
`
`2017. Accordingly, this request meets the requirements set forth in Rule
`
`42.100(b).
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`
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`The Board should grant Patent Owner’s requested relief because the
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`request is timely, Petitioner recognized that the involved patent may expire
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`before a final written decision is rendered, Pet. at 7, and Petitioner alleges
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`that the outcome of the proceeding will not be affected by the Board
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`adopting a Phillips-type claim construction. Id.
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`Accordingly, Patent Owner requests that the Board grant this motion
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`and apply a district court-type claim construction in this proceeding.
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`
`
`
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`
`
`
`
`
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`Respectfully submitted,
`/Tarek N. Fahmi/
`
`Tarek N. Fahmi
`Reg. No. 41,402
`
`
`
`
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`
`
`Dated: March 2, 2017
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`
`
`
`
`
`
`
`Ascenda Law Group, PC
`333 W San Carlos St., Suite 200
`San Jose, CA 95110
`Tel: 866-877-4883
`Email: tarek.fahmi@ascendalaw.com
`
`
`
`
`
`4
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`
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`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that a copy of the foregoing
`PATENT OWNER’S MOTION & CERTIFICATION
`UNDER 37 C.F.R. § 42.100(b) REQUESTING EXPIRED
`PATENT CLAIM CONSTRUCTION
`was served on March 2, 2017, by filing this document though the PTAB E2E
`System as well as by delivering a copy via email directed to the attorneys of
`record for the Petitioner at the following address:
`
`
`Celine Jimenez Crowson
`Joseph J. Raffetto
`Ryan Stephenson
`HOGAN LOVELLS US LLP
`555 13th Street N.W.
`Washington, D.C. 20004
`
`Mercedes-DSIPCase@hoganlovells.com
`
`
`The parties have agreed to electronic service in this proceeding.
`
`
`
`
`
`Dated: March 2, 2017
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`
`
`
`
`
`
`
`Ascenda Law Group, PC
`333 W San Carlos St., Suite 200
`San Jose, CA 95110
`Tel: 866-877-4883
`Email: patents@ascendalaw.com
`
`
`
`
`
`
`
`
`
`
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`Respectfully submitted,
`/Tarek N. Fahmi/
`
`Tarek N. Fahmi
`Reg. No. 41,402
`
`
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`
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`5
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`
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