`Trials@uspto.gov
`Tel: 571-272-7822
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` Paper 34
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`Entered: March 24, 2014
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`TOYOTA MOTOR CORPORATION
`Petitioner
`
`v.
`
`AMERICAN VEHICULAR SCIENCES LLC
`Patent Owner
`_______________
`
`IPR2013-00412
`Patent 6,738,697
`_______________
`
`Before JAMESON LEE, TREVOR M. JEFFERSON, and
`BARBARA A. PARVIS, Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`On March 21, 2014, a telephone conference call was held between
`respective counsel for the parties and Judges Lee, Jefferson, and Parvis. The
`parties sought authorization to file a joint motion to terminate this proceeding with
`respect to both Petitioner and Patent Owner, on the basis that they have settled.
`
`
`
`IPR2013-00412
`Patent 6,738,697
`
`
`Generally, the Board expects that a proceeding will terminate after the filing
`of a settlement agreement. See, e.g., Office Patent Trial Practice Guide, 77 Fed.
`Reg. 48,756, 48,768 (Aug. 14, 2012). Any agreement or understanding between
`the parties made in connection with, or in contemplation of, the termination of a
`proceeding shall be in writing and that a true copy of the agreement shall be filed
`with the Board prior to termination. 37 C.F.R. § 42.74(b).
`The joint motion must include a brief explanation as to why termination is
`appropriate. Information should be provided on the status of related district court
`actions in which Patent 6,738,697 has been asserted, particularly regarding the
`status of all defendants.
`The joint motion to terminate must be accompanied by a true copy of the
`settlement agreement as required by 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b).
`A redacted version of the settlement agreement will not be accepted as a true copy
`of the settlement agreement.
`With regard to having the settlement agreement treated as business
`confidential information and kept separate from the patent file(s) under 37 C.F.R.
`§ 42.74(c), the parties must file the confidential settlement agreement
`electronically via the Patent Review Processing System (PRPS) in accordance with
`the instructions provided on the Board’s website (uploading as “Parties and Board
`Only”). Attention of the parties is also directed to FAQ G2 on the Board’s website
`page at http://www.uspto.gov/ip/boards/bpai/prps.jsp for instructions on how to
`file a settlement agreement as confidential.
`
`
`
`
`2
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`
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`IPR2013-00412
`Patent 6,738,697
`
`
`The Patent Owner Response has not yet been filed in this case. The parties
`can expect a decision on their joint motion to terminate proceeding within ten days
`of the date of filing of such a motion.
`Accordingly, it is
`ORDERED that the parties are authorized to file a joint motion to terminate
`proceeding with respect to both Petitioner and Patent Owner;
`FURTHER ORDERED that the joint motion must be accompanied by a true
`copy, labeled as an exhibit, of the settlement agreement as required by 35 U.S.C.
`§ 317(b) and 37 C.F.R. § 42.74(b);
`FURTHER ORDERED that in the joint motion the parties may request that
`the settlement agreement be treated as business confidential information and kept
`separate from the underlying patent file, as provided in 37 C.F.R. § 42.74(c);
`FURTHER ORDERED that any confidential settlement agreement must be
`filed electronically via PRPS in accordance with the instructions provided on the
`Board’s website (uploading as “Parties and Board Only”); and
`FURTHER ORDERED that the parties are authorized to stipulate to
`different Due Dates 4-6 of the Scheduling Order dated January 13, 2014 (Paper
`20), so long as the revised due dates do not extend beyond Due Date 7.
`
`
`
`
`
`
`3
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`
`
`IPR2013-00412
`Patent 6,738,697
`
`For Petitioner:
`
`Antony Pfeffer
`Matthew Berkowitz
`Thomas Makin
`apfeffer@kenyon.com
`mberkowitz@kenyon.com
`tmakin@kenyon.com
`
`For Patent Owner:
`
`Thomas Wimbiscus
`Scott McBride
`Christopher Scharff
`twimbiscus@mcandrews-ip.com
`smcbride@mcandrews-ip.com
`cscharff@mcandrews-ip.com
`
`
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`4
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`
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