IPR2023-01113
`Paper 7
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`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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`MICHIGAN MOTOR TECHNOLOGIES, LLC,
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`Patent Owner
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`___________
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`Case IPR2023-01113
`U.S. Patent No. 6,561,166
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`___________
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`PETITIONER MERCEDES-BENZ USA, LLC AND
`PATENT OWNER MICHIGAN MOTOR TECHNOLOGIES, LLC’S
`JOINT MOTION TO TERMINATE
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`Paper 7
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`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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`MICHIGAN MOTOR TECHNOLOGIES, LLC,
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`Patent Owner
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`___________
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`Case IPR2023-01113
`U.S. Patent No. 6,561,166
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`___________
`
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`PETITIONER MERCEDES-BENZ USA, LLC AND
`PATENT OWNER MICHIGAN MOTOR TECHNOLOGIES, LLC’S
`JOINT MOTION TO TERMINATE
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`
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`Pursuant to 35 U.S.C. § 317 and 37 C.F.R. §§ 42.5(a), 42.71(a), and 42.72,
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`and the Board’s authorization received on October 30, 2023, Petitioner Mercedes-
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`Benz USA, LLC (“Mercedes”) and Patent Owner Michigan Motor Technologies,
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`IPR2023-01113
`Paper 7
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`LLC (“Patent Owner”) jointly move to terminate IPR2023-01113.
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`I.
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`LEGAL STANDARD
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`35 U.S.C. § 317(a) provides that “[a]n inter partes review instituted under this
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`chapter shall be terminated with respect to any petitioner upon the joint request of
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`the petitioner and patent owner, unless the Office has decided the merits of the
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`proceeding before the request for termination is filed.” 37 C.F.R. § 42.72 also
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`provides that “[t]he Board may terminate a trial without rendering a final written
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`decision, where appropriate, including … pursuant to a joint request under 35 U.S.C.
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`317(a).” Finally, the Consolidated Trial Practice Guide states that “[a] petitioner
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`and a patent owner may terminate the proceeding with respect to the petitioner by
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`filing a written agreement with the Board, unless the Board has already decided the
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`merits of the proceeding before the request for termination is filed.” Patent Trial and
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`Appeal Board Consolidated Trial Practice Guide, Nov. 19 at 4.
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`II.
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`FACTUAL BACKGROUND
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`Patent Owner commenced litigation against Mercedes asserting U.S. Patent
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`No. 6,561,166 (the “’166 patent”) in Michigan Motor Technologies, LLC v.
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`Mercedes-Benz USA, LLC, No. 22-cv-03957 (N.D. Ill.). On June 21, 2023,
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`2
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`IPR2023-01113
`Paper 7
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`Mercedes filed a Petition requesting inter partes review of the ’166 patent. See Paper
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`1. The Board has not yet issued an institution decision.
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`Patent Owner and Mercedes have agreed to settle their disputes and have
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`reached a written agreement (the “Settlement Agreement”) to terminate this IPR
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`proceeding, subject to the Board’s approval. Mercedes is filing, confidentially, a
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`true and correct copy of the Settlement Agreement contemporaneously herewith as
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`Exhibit 1050. There are no collateral agreements or understandings in connection
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`with, or in contemplation of, the termination of this proceeding. Mercedes is also
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`filing a joint request that the Settlement Agreement be treated as business
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`confidential information and be kept separate from the file of the ’166 patent,
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`pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). It is understood that the
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`Settlement Agreement as filed shall be available only pursuant to a Government
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`agency on written request to the Board or as otherwise specified in 37 C.F.R. §
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`42.74(c). Mercedes and Patent Owner represent that they have complied with all
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`requirements of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b).
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`III. ARGUMENT
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`Dismissal of the Petition as to Mercedes is appropriate here because Mercedes
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`and Patent Owner jointly request dismissal, and the proceeding is at an early stage.
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`The Board has not yet issued any institution decision. Terminating the IPR “at this
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`early juncture, promotes efficiency and minimizes unnecessary costs.” Sony Corp.
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`3
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`IPR2023-01113
`Paper 7
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`v. Straight Path IP Group Inc., IPR2014-00230, Paper 13, at 3 (PTAB May 2, 2013).
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`Efficiency and the interest of justice are best served because dismissal will reduce
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`the parties’ expenses and conserve the Board’s resources, which promotes judicial
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`economy and furthers the policy of the Board. See, e.g., Patent Trial and Appeal
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`Board Consolidated Trial Practice Guide, Nov. 19 at 86.
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`IV. CONCLUSION
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`For the reasons discussed above, Mercedes and Patent Owner respectfully
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`request that the Board grant this joint motion to terminate this proceeding.
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`Date: November 2, 2023
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`/s/ James M. Glass
`___________________________
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`James M. Glass
`Registration No. 46,729
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`Quinn Emanuel Urquhart & Sullivan LLP
`51 Madison Ave, 22nd Floor
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`New York, New York 10010
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`Tel: (212) 849-7142
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`Fax (212) 849-7100
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`/s/ Timothy Devlin
`___________________________
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`Timothy Devlin
`Registration No. 41,706
`Devlin Law Firm LLC
`1526 Gilpin Avenue
`Wilmington, DE 19806
`Tel: (302) 449-9010
`Fax: (302) 353-4251
`Counsel for Patent Owner
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`4
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6, I hereby certify that on November 2, 2023 the
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`foregoing paper from Petitioner Mercedes was served via email on the following
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`counsel of record for Patent Owner:
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`TD-PTAB@devlinlawfirm.com
`tdevlin@devlinlawfirm.com
`jwejnert@devlinlawfirm.com
`dlflitparas@devlinlawfirm.com
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`/s/ James M. Glass
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`James M. Glass
`Registration No. 46,729
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