UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`TOYOTA MOTOR CORPORATION,
`
`Petitioner
`
`
`
`v.
`
`
`
`AMERICAN VEHICULAR SCIENCES,
`
`Patent Owner
`
`
`
`Patent No. 6,738,697
`
`Issue Date: May 18, 2004
`
`Title: TELEMATICS SYSTEM FOR VEHICLE DIAGNOSTICS
`____________
`
`
`
`JOINT MOTION TO TERMINATE PROCEEDING
`FOR INTER PARTES REVIEW OF U.S. PATENT NO. 6,738,697
`PURSUANT TO 35 U.S.C. § 317
`
`Case No. IPR2013-00412
`
`
`
`
`
`
`
`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`TOYOTA MOTOR CORPORATION,
`
`Petitioner
`
`
`
`v.
`
`
`
`AMERICAN VEHICULAR SCIENCES,
`
`Patent Owner
`
`
`
`Patent No. 6,738,697
`
`Issue Date: May 18, 2004
`
`Title: TELEMATICS SYSTEM FOR VEHICLE DIAGNOSTICS
`____________
`
`
`
`JOINT MOTION TO TERMINATE PROCEEDING
`FOR INTER PARTES REVIEW OF U.S. PATENT NO. 6,738,697
`PURSUANT TO 35 U.S.C. § 317
`
`Case No. IPR2013-00412
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2013-00412
`
`Pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.74(a)-(b), Petitioner
`
`Toyota Motor Corporation (“Toyota”) and Patent Owner American Vehicular
`
`Sciences LLC (“AVS”) jointly request termination of the Inter Partes Review of
`
`U.S. Patent No. 6,738,697, Case No. IPR2013-00412. Toyota and AVS agree
`
`that each party bear its own fees and expenses.
`
`Toyota filed its petition for inter partes review on July 8, 2013. AVS filed
`
`a preliminary response on October 17, 2013. The inter partes review was
`
`subsequently instituted on January 13, 2014. The Parties have agreed to settle
`
`their dispute and have reached agreement to terminate this inter partes review.
`
`The Settlement Agreement has been made in writing and is filed separately as
`
`Exhibit 2001 (filed concurrently with Joint Request to Treat Agreement as
`
`Business Confidential Information Under 35 U.S.C. §317 (b) and 37 C.F.R. §
`
`42.74 (c)). There are no collateral agreements referred to in the Parties’
`
`Settlement Agreement.
`
`The parties desire that the Board terminate this IPR in its entirety. If,
`
`however, the Board elects to independently continue the IPR in its entirety, then
`
`under the terms of the Parties’ Settlement Agreement, Toyota will not receive a
`
`covenant not to sue from AVS regarding this patent, nor will AVS dismiss with
`
`prejudice its litigation claims relating to this patent.
`
`As stated in 35 U.S.C. § 317(a), because Toyota and AVS request this
`
`
`
`1
`
`
`
`
`
`
`
`
`
`
`
`
`termination, no estoppel under 35 U.S.C. § 315(e) shall attach to Petitioner
`
`
`
`
`
`
`
`IPR2013-00412
`
`Toyota. As provided in 37 C.F.R. § 42.73(d)(3), because no adverse judgment
`
`has been entered, as to Patent Owner AVS, no estoppel under 37 C.F.R. §
`
`42.73(d)(3) shall attach to AVS.
`
`A conference call in this proceeding was held on March 21, 2014, between
`
`counsel for the Parties and Judges Lee, Jefferson, and Parvis. The Parties advised
`
`the Board that they have agreed to settle, and sought authorization to file a joint
`
`motion to terminate the proceeding and to file the Parties' Settlement Agreement
`
`as business confidential information.
`
`On March 24, 2014, the Board issued an order authorizing the Parties to file
`
`a joint motion to terminate this proceeding, and to file a separate paper requesting
`
`that the Settlement Agreement be treated as business confidential information as
`
`specified in 37 C.F.R. § 42.74(c).
`
`Termination of this proceeding is appropriate as the Parties have agreed to
`
`settle their dispute.
`
`U.S. Patent No. 6,738,697 is (or was) being litigated in the following civil
`
`actions, which are at the stages described below:
`
` American Vehicular Sciences v. Toyota Motor Corp., et al., No. 6:12-
`
`cv-00405 (E.D. Tex.), filed June 25, 2012 (consolidated into 6:12-cv-
`
`00404). On February 19, 2014, the district court stayed this civil
`
`
`
`2
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2013-00412
`
`action as to Toyota in view of this IPR2013-00412. The Parties’
`
`Settlement Agreement provides for dismissal of this litigation and a
`
`covenant not to sue under the U.S. Patent No. 6,738,697 under
`
`certain circumstances. As noted above, if the Board elects to
`
`independently continue the IPR in its entirety, then under the terms
`
`of the Parties’ Settlement Agreement, Toyota will not receive a
`
`covenant not to sue from AVS regarding this patent, nor will AVS
`
`dismiss with prejudice its litigation claims relating to this patent.
`
`Accordingly, the parties desire that the Board terminate this IPR in
`
`its entirety.
`
` American Vehicular Sciences LLC v. BMW Grp. A/K/A BMW AG et
`
`al., No. 6:12-CV-412 (E.D. Tex.), filed Jun. 25, 2012. This case
`
`was dismissed on November 15, 2013.
`
` American Vehicular Sciences LLC v. Hyundai Motor Co. et al., No.
`
`6:12-CV-776 (E.D. Tex.), filed Oct. 15, 2012. On March 13, 2014,
`
`the parties filed a Joint Submission Regarding Amended Docket
`
`Control Order, as instructed by the Court due to the changed Claim
`
`Construction Hearing date. While an Amended Docket Control
`
`Order has not yet been entered, a Claim Construction Hearing will be
`
`held on February 19, 2015. The Hyundai defendants were served on
`
`3
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2013-00412
`
`November 13, 2012. In considering the motion to stay filed by
`
`Toyota in Civil Action No. 6:12-cv-00404, the district court inquired
`
`whether the Hyundai defendants would agree to “(1) stipulate to the
`
`same estoppel effect that will apply against Toyota resulting from the
`
`IPRs or some variation thereof, and (2) stipulate to be bound as soon
`
`as the PTO issues its decisions on the IPRs rather than waiting until
`
`the appeal process is completed.” The Hyundai defendants did not
`
`agree to the district court’s conditions and the case against the
`
`Hyundai defendants was not stayed.
`
` American Vehicular Sciences LLC v. Kia Motors Corp., No. 6:13-
`
`CV-148 (E.D. Tex.), filed Feb. 13, 2013. On March 13, 2014, the
`
`parties filed a Joint Submission Regarding Amended Docket Control
`
`Order, as instructed by the Court due to the changed Claim
`
`Construction Hearing date. While an Amended Docket Control
`
`Order has not yet been entered, a Claim Construction Hearing will be
`
`held on February 19, 2015. The last Kia defendant was served April
`
`17, 2013. In considering the motion to stay filed by Toyota in Civil
`
`Action No. 6:12-cv-00404, the district court inquired whether the Kia
`
`defendants would agree to “(1) stipulate to the same estoppel effect
`
`that will apply against Toyota resulting from the IPRs or some
`
`4
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2013-00412
`
`variation thereof, and (2) stipulate to be bound as soon as the PTO
`
`issues its decisions on the IPRs rather than waiting until the appeal
`
`process is completed.” The Kia defendants did not agree to the
`
`district court’s conditions and the case against the Kia defendants
`
`was not stayed.
`
` American Vehicular Sciences LLC v. American Honda Motor Co.,
`
`Inc. et al., No. 6:13-CV-226 (E.D. Tex.), filed Mar. 8, 2013. On
`
`March 13, 2014, the parties filed a Joint Submission Regarding
`
`Amended Docket Control Order, as instructed by the Court due to the
`
`changed Claim Construction Hearing date. While an Amended
`
`Docket Control Order has not yet been entered, a Claim Construction
`
`Hearing will be held on February 19, 2015. The last Honda
`
`defendant was served April 23, 2013. In considering the motion to
`
`stay filed by Toyota in Civil Action No. 6:12-cv-00404, the district
`
`court inquired whether the Honda defendants would agree to “(1)
`
`stipulate to the same estoppel effect that will apply against Toyota
`
`resulting from the IPRs or some variation thereof, and (2) stipulate to
`
`be bound as soon as the PTO issues its decisions on the IPRs rather
`
`than waiting until the appeal process is completed.” The Honda
`
`defendants did not agree to the district court’s conditions and the
`
`5
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2013-00412
`
`case against the Honda defendants was not stayed.
`
` American Vehicular Sciences LLC v. Mercedes-Benz U.S. Intl., Inc.,
`
`No. 6:13-CV-310 (E.D. Tex.), filed Apr. 3, 2013. On March 13,
`
`2014, the parties filed an Agreed Motion to Amend Docket Control
`
`Order, as instructed by the Court due to the changed Claim
`
`Construction Hearing date. While an Amended Docket Control
`
`Order has not yet been entered, a Claim Construction Hearing will be
`
`held on February 19, 2015. The last Mercedes Defendant was served
`
`April 17, 2013. In considering the motion to stay filed by Toyota in
`
`Civil Action No. 6:12-cv-00404, the district court inquired whether
`
`the Mercedes defendants would agree to “(1) stipulate to the same
`
`estoppel effect that will apply against Toyota resulting from the IPRs
`
`or some variation thereof, and (2) stipulate to be bound as soon as the
`
`PTO issues its decisions on the IPRs rather than waiting until the
`
`appeal process is completed.” The Mercedes defendants did not
`
`agree to the district court’s conditions and the case against the
`
`Mercedes defendants was not stayed.
`
`Furthermore, U.S. Patent No. 6,738,697 is the subject of IPR2013-00413,
`
`which Toyota filed simultaneously with the instant proceeding and which
`
`remains pending. The Parties are filing a joint motion to terminate that
`
`
`
`6
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2013-00412
`
`
`proceeding as well.
`
`No litigation or proceeding involving U.S. Patent No. 6,738,697 other than
`
`that identified above is contemplated in the foreseeable future.
`
` Wherefore, AVS and Toyota respectfully request termination of the Inter
`
`Partes Review of U.S. Patent No. 6,738,697, Case No. IPR2013-00412.
`
`Date: March 26, 2014
`
`Respectfully submitted
`
`/s/ Thomas J. Wimbiscus
`Thomas J. Wimbiscus (Reg. No. 36,059)
`Scott P. McBride (Reg. No. 42,835)
`McAndrews, Held & Malloy, Ltd.
`500 W. Madison, 34th Floor
`Chicago, Il 60661
`(312) 775-8000
`Attorney for Patent Owner,
`American Vehicular Sciences LLC
`
`
`
`/s/ A. Antony Pfeffer
`Matthew Berkowitz (Reg. No. 57,215)
`A. Antony Pfeffer (Reg. No. 43,857)
`Thomas R. Makin
`Kenyon & Kenyon LLP
`One Broadway
`New York, NY 10004
`Tel: 212-425-7200
`Attorney for Petitioner,
`Toyota Motor Corporation
`
`
`
`
`7
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2013-00412
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that the JOINT MOTION TO TERMINATE
`PROCEEDING FOR INTER PARTES REVIEW OF U.S. PATENT NO.
`6,738,697 PURSUANT TO 35 U.S.C. § 317 was served on this 26th day of
`March by electronic mail to the following:
`
`Matt Berkowitz
`mberkowitz@kenyon.com
`A. Antony Pfeffer
`apfeffer@kenyon.com
`Thomas R. Makin
`tmakin@kenyon.com
`ptab@kenyon.com
`Kenyon & Kenyon LLP
`One Broadway
`New York, NY 10004
`Tel: 212-425-7200
`
`
`
`
`
`
`/Thomas J. Wimbiscus/
`Thomas J. Wimbiscus
`Registration No. 36,059
`
`
`
`
`8
`
`
`
`MCANDREWS HELD & MALLOY
`
`
`
`
`
`
`Telephone: 312-775-8000
`
`
`Facsimile: 312-775-8100
`
`
`
`
`
`CUSTOMER NUMBER: 23446
`
`Date: March 26, 2014
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
