UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`MERCEDES-BENZ USA, LLC,
`Petitioner,
`
`v.
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`DIGITAL STREAM IP, LLC,
`Patent Owner.
`
`
`Case IPR2017-00834
`Patent 8,265,545
`
`
`JOINT MOTION TO TERMINATE
`UNDER 35 U.S.C. § 317
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`
`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
`
`
`JOINT MOTION TO TERMINATE
`UNDER 35 U.S.C. § 317
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`
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`STATEMENT OF RELIEF REQUESTED
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`Pursuant to 35 U.S.C. § 317(a), 37 C.F.R. § 42.72, and the Board’s email
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`dated April 17, 2017, authorizing this motion, Petitioner Mercedes-Benz USA,
`
`LLC (“Mercedes”) and Patent Owner Digital Stream IP, LLC (“Digital Stream”)
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`jointly request termination of Inter Partes Review Case IPR2017-00834 of U.S.
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`Patent No. 8,265,545.
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`STATEMENT OF FACTS
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`
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`Mercedes filed its petition for inter partes review on February 1, 2017. The
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`USPTO issued a Notice of Filing Date Accorded to Petition and Time for Filing
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`Patent Owner Preliminary Response on February 27, 2017. (Paper 4.) Since
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`receiving that Notice, the parties settled their dispute and reached a Settlement
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`Agreement. (Ex. 1014.)
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`
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`The Settlement Agreement obligates the parties to jointly file a stipulated
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`motion dismissing with prejudice all claims between the parties in the district court
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`litigation associated with the present IPR proceeding.1 (Ex. 1014 § 2.1 and Ex. A).
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`The Settlement Agreement also obligates the parties to jointly move to terminate
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`this IPR and two other IPRs on related patents. (Ex. 1014, § 2.2 and Ex. B).
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`1 Digital Stream IP, LLC v. Mercedes-Benz USA, LLC, Case No. 2:16-cv-00981-
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`JRG (E.D. Tex.).
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`1
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`ARGUMENT
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`I.
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`Termination of This IPR is Appropriate.
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`Generally, a proceeding will terminate after the filing of a settlement
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`agreement. See, e.g., Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756,
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`48,768 (Aug. 14, 2012). In IPR2013-00428, Paper No. 56, the Board provided
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`guidance as to the content of a motion to terminate. There, the Board indicated that
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`a joint motion, such as this one, should (1) include a brief explanation as to why
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`termination is appropriate; (2) identify all parties in any related litigation involving
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`the patents at issue and the status of each; and (3) identify any related proceedings
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`currently before the Office. IPR2013-00428, Paper No. 56 at 2. This Motion
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`satisfies each of the above requirements.
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`1.
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`Brief Explanation as to why Termination is Appropriate.
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`
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`The Board should terminate this IPR because the proceeding is still in its
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`very early stages. Patent Owner’s Preliminary Response is not due until May 27,
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`2017; no decision as to whether to institute trial in this proceeding has been
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`entered; and no final written decision on the merits of this inter partes review
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`proceeding has been made. Mercedes and Digital Stream have settled their related
`
`dispute; the parties’ Settlement Agreement obligates Mercedes and Digital Stream
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`to file a stipulated motion to dismiss all claims with respect to U.S. Patent No.
`
`8,265,545 with prejudice; and both Mercedes and Digital Stream agree that this
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`
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`2
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`
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`review should be terminated. Moreover, under 35 U.S.C. § 317(a), this proceeding
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`“shall be terminated with respect to [] [P]etitioner” because the parties are jointly
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`requesting termination and the Office has not yet “decided the merits of the
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`proceeding before the request for termination is filed.”
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`2.
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`Identification of All Parties in any Related Litigation Involving
`the Patents at Issue and the Status of Each.
`
`
`The challenged patent, U.S. Patent No. 8,265,545, is at issue in the following
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`pending litigation, with the status of each case included in parenthetical:
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` Digital Stream IP LLC v. Robert Bosch, LLC, No. 2:16-cv-01188-JRG
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`(E.D. Tex.) (ongoing);
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` Digital Stream IP LLC v. BMW of North America, LLC, No. 2:16-cv-
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`00982-JRG (E.D. Tex.) (ongoing); 2 and Digital Stream IP LLC v.
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`Mercedes-Benz USA, LLC, No. 2:16-cv-00981-JRG (E.D. Tex.)
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`(dismissed);
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` Digital Stream IP LLC v. American Honda Motor Co., Inc., No. 2:16-cv-
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`00700-JRG (E.D. Tex.) (dismissed); Digital Stream IP LLC v. Nissan
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`North America, Inc., No. 2:16-cv-00698-JRG (E.D. Tex.) (stayed
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`pending Bosch case); Digital Stream IP LLC v. General Motors LLC, No.
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`2 This case was consolidated for pre-trial purposes into the Mercedes case (No.
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`2:16-cv-00981-JRG).
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`3
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`2:16-cv-00204-JRG (E.D. Tex.) (dismissed); and Digital Stream IP LLC
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`v. Best Buy Co., Inc., et al., No. 2:16-cv-00203-JRG (E.D. Tex.)
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`(dismissed).3
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`3.
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`Related Proceedings Currently Before the Office.
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`Proceedings relating to the challenged patent and certain “family members”
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`are currently before the Office. U.S. Patent No. 8,265,545 issued from U.S. Patent
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`App. No. 13/101,841, and is a continuation of (a) U.S. Patent App. No. 12/363,593
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`(now U.S. Pat. No. 7,962,090), which (b) through an intervening patent, is a
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`continuation of U.S. Patent App. No. 09/798,331 (now U.S. Pat. No. 6,757,913).
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`The ’090 Patent is at issue in IPR2017-00837 (filed by Mercedes). The ’913 Patent
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`is at issue in IPR2017-00833 (filed by Mercedes) and IPR2016-01749 (filed by
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`Unified Patents Inc.). Requests for termination of IPR2017-00833, IPR2017-
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`00834, and IPR2017-00837 are being filed concurrently on even date herewith.
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`III. Future Participation by the Parties.
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`
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`Mercedes will not further participate in Inter Partes Review Case IPR2017-
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`00834 if it is not terminated pursuant to this Motion. Digital Stream reserves its
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`right to participate (including the right to seek exclusion of some or all the
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`testimony of Mercedes’ declarant), if necessary. Digital Stream notes, however,
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`3 These cases were consolidated for pre-trial purposes into the General Motors
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`case (No. 2:16-cv-00204-JRG).
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`4
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`that, in the absence of Mercedes, it is unclear how these proceedings could
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`properly proceed.
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`IV. The Parties’ Settlement Agreement.
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`
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`The Parties’ Settlement Agreement has been made in writing, and as
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`required under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b), a true copy of the
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`written Settlement Agreement resolving the dispute underlying this review is filed
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`herewith as Exhibit 1014.4 The Parties desire that this Settlement Agreement be
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`treated as business confidential information and kept separate from the file of the
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`involved patent, pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), and a
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`separate joint request to that effect is being filed on even date herewith.
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`CONCLUSION
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`
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`For the foregoing reasons, Mercedes and Digital Stream respectfully request
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`termination of Inter Partes Review Case IPR2017-00834 involving U.S. Patent
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`No. 8,265,545. Should this review be terminated, as jointly requested by the
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`parties, no estoppel under § 315(e) shall attach to Mercedes. 35 U.S.C. § 317(a).
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`The Patent Trial and Appeal Board is hereby authorized to charge any fees
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`associated with the filing to Deposit Account 50-1349.
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`4 The Settlement Agreement is being filed electronically via the PTAB E2E System
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`as “Parties and Board Only.”
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`5
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`Dated: April 18, 2017
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`Respectfully submitted,
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`
`
` /s/ Celine Jimenez Crowson
`Celine Jimenez Crowson (Reg. No. 43,912)
`Joseph J. Raffetto (Reg. No. 66,218)
`Ryan J. Stephenson (pro hac vice to be submitted)
`HOGAN LOVELLS US LLP
`555 13th Street, N.W.
`Washington, D.C. 20004
`Telephone: 202.637.5600
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`Counsel for Petitioner Mercedes-Benz USA, LLC
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`
`
` /s/ Tarek N. Fahmi
`Tarek N. Fahmi (Reg. No. 41,402)
`Jason LaBerteaux (Reg. No. 65724)
`Ascenda Law Group, PC
`333 W San Carlos St., Suite 200
`San Jose, CA 95110
`Tel: 866-877-4883
`
`Counsel for Patent Owner Digital Stream IP, LLC
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`6
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