`Trials@uspto.gov
`571-272-7822
`
`Date Entered: May 4, 2017
`
`
`
`
`
`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.
`____________
`
`Cases IPR2017-00833 (Patent 7,962,090 B2)
`IPR2017-00834 (Patent 8,265,545 B2)
`IPR2017-00837 (Patent 6,757,913 B2)1
`____________
`
`
`
`Before STACEY G. WHITE, MICHELLE N. WORMMEESTER, and
`WILLIAM M. FINK, Administrative Patent Judges.
`
`FINK, Administrative Patent Judge.
`
`DECISION
`Termination of Proceeding
`37 C.F.R. § 42.72
`
`
`
`
`
`1 This Order addresses a similar issue in the three proceedings. Therefore,
`we exercise our discretion to issue one order to be filed in each proceeding.
`The parties are not authorized to use this style of heading in subsequent
`papers.
`
`
`
`
`
`
`
`IPR2017-00833 (Patent 7,962,090 B2)
`IPR2017-00834 (Patent 8,265,545 B2)
`IPR2017-00837 (Patent 6,757,913 B2)
`
`
`On April 18, 2017, the parties filed joint motions to terminate in
`IPR2017-00833, IPR2017-00834, and IPR2017-00837 pursuant to 35 U.S.C.
`§ 317. IPR2017-00833, Paper 6 (“Motion”)2; IPR2017-00834, Paper 6;
`IPR2017-00837, Paper 6. Along with the joint motions, the parties filed a
`settlement agreement in each of the proceedings covering the patents
`involved in these proceedings. IPR2017-00833, Ex. 1014 (“Settlement
`Agreement”); IPR2017-00834, Ex. 1014; IPR2017-00837, Ex. 1015. The
`parties also have filed a joint request to have the Settlement Agreement
`treated as confidential business information under 35 U.S.C. § 317(b) and 37
`C.F.R. § 42.74(c). IPR2017-00833, Paper 7; IPR2017-00834, Paper 7;
`IPR2017-00837, Paper 7.
`The parties represent the Settlement Agreement is a “true copy . . .
`resolving the dispute underlying this review.” Motion 5. We also observe
`the Settlement Agreement purports to be the “Entire Agreement” between
`the parties. Settlement Agreement 6. The parties further represent that they
`are obligated to file a stipulated motion to dismiss all claims with respect to
`the patents at issue in the inter partes reviews. Motion 1–2. We accept the
`parties’ representations.
`
`Under 35 U.S.C. § 317(a), “[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.”
`
`
`2 Because the substance of the cited papers and exhibits is the same across
`all three proceedings, we refer to IPR2017-00833 to the extent we cite a
`single paper or exhibit.
`
`2
`
`
`
`
`IPR2017-00833 (Patent 7,962,090 B2)
`IPR2017-00834 (Patent 8,265,545 B2)
`IPR2017-00837 (Patent 6,757,913 B2)
`
`
`These proceedings are at an early stage. No Patent Owner
`Preliminary Responses have been filed, and no decision whether to institute
`has been made in any of the proceedings. Under the circumstances, we
`determine that it is appropriate to terminate the cases with respect to both
`parties. See 35 U.S.C. § 317(a); 37 C.F.R. § 42.72. Therefore, the joint
`motions to terminate are granted. This paper does not constitute a final
`written decision pursuant to 35 U.S.C. § 318(a).
`ORDER
`
`
`
`Accordingly, it is:
`ORDERED that the parties’ Joint Requests in IPR2017-00833,
`IPR2017-00834, and IPR2017-00837 that the Settlement Agreement (Ex.
`1014, Ex. 1014, and Ex. 1015, respectively) be treated as business
`confidential information, to be kept separate from the patent file, are
`granted;
`FURTHER ORDERED that the Joint Motions to Terminate in
`IPR2017-00833, IPR2017-00834, and IPR2017-00837 are granted; and
`FURTHER ORDERED that these inter partes review proceedings are
`hereby terminated.
`
`3
`
`
`
`
`
`
`
`
`
`
`IPR2017-00833 (Patent 7,962,090 B2)
`IPR2017-00834 (Patent 8,265,545 B2)
`IPR2017-00837 (Patent 6,757,913 B2)
`
`
`PETITIONER:
`
`Celine Jimenez Crowson
`Joseph J. Raffetto
`Ryan Stephenson
`HOGAN LOVELLS US LLP
`celine.crowson@hoganlovells.com
`joseph.raffetto@hoganlovells.com
`ryan.stephenson@hoganlovells.com
`
`PATENT OWNER:
`
`Tarek N. Fahmi
`Jason LaBerteaux
`ASCENDA LAW GROUP, PC
`tarek.fahmi@ascendalaw.com
`jason.laberteaux@ascendalaw.com
`
`
`4
`
`
`
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