`571-272-7822
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`
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`Paper 34
`Entered: March 28, 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.
`
`
`Case IPR2013-00413
`Patent 6,738,697
`
`
`Before JAMESON LEE, BARBARA A. PARVIS, and
`GREGG I. ANDERSON, Administrative Patent Judges.
`
`PARVIS, Administrative Patent Judge.
`
`
`ORDER
`Termination of Proceeding
`37 C.F.R. § 42.72
`
`On March 26, 2014, the parties filed a joint motion to terminate this inter
`
`
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`partes review with respect to both Petitioner (“Toyota”) and Patent Owner
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`(“AVS”). Paper 30. Also on March 26, 2014, the parties filed a copy of their
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`written settlement agreement covering Patent 6,738,697 involved in this inter
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`partes review (Ex. 2001), and a joint request to have their settlement agreement
`
`
`
`Case IPR2013-00413
`Patent 6,738,697
`
`treated as confidential business information under 35 U.S.C. § 317(b) and
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`37 C.F.R. § 42.74(c) (Paper 31). The parties represent that there are no collateral
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`agreements referred to in their settlement agreement. Paper 30, 1.
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`
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`Under 35 U.S.C. § 317(a), “[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.” The requirement for
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`terminating review with respect to Petitioner is met.
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`
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`Under 35 U.S.C. § 317(a), “If no petitioner remains in the inter partes
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`review, the Office may terminate the review or proceed to a final written decision
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`under section 318(a).” Toyota is the sole petitioner in this review. The Board has
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`discretion to terminate this review with respect to AVS as Patent Owner.
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`
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`In the joint motion, the parties indicate that their settlement agreement
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`provides for dismissal of related civil litigation between Toyota and AVS,
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`involving Patent 6,738,697, in the Eastern District of Texas, if the Board grants the
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`motion to terminate proceeding. Paper 30, 2-3. The motion identifies the civil
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`action as American Vehicular Sciences v. Toyota Motor Corp., et al., No. 6:12-cv-
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`00405 (E.D. Tex.)(filed June 25, 2012). Id.
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`
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`The joint motion identifies other related litigation involving Patent
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`6,738,697, and defendants other than Toyota, which will not be dismissed even if
`
`the Board grants the joint motion to terminate proceeding. Paper 30, 3-6. On this
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`record, the defendants in such other related litigation have not filed a petition for
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`inter partes review of Patent 6,738,697, and there is no pending motion by any
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`third party for joinder with this inter partes review.
`
`-2-
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`
`
`
`
`Case IPR2013-00413
`Patent 6,738,697
`
`
`
`The joint motion identifies a related inter partes review proceeding
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`involving Patent 6,738,697, and filed by Toyota, i.e., IPR2013-00412, and
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`indicates that the parties also are filing a joint motion to terminate that proceeding.
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`Paper 30, 6-7.
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`
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`AVS has not yet filed a Patent Owner Response in this proceeding or
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`IPR2013-00412. The Board determines that in these circumstances it is
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`appropriate to terminate review both as to Toyota and AVS without rendering a
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`final written decision See 35 U.S.C. § 317(a); 37 C.F.R. § 42.72.
`
`
`
`
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`It is
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`ORDERED that the joint motion to terminate IPR2013-00413 is granted,
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`and this inter partes review is hereby terminated as to all parties including Toyota
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`as the Petitioner and AVS as the Patent Owner; and
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`
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`FURTHER ORDERED that the parties’s joint request (Paper 31) to have
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`their settlement agreement (Exhibit 2001) treated as business confidential
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`information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) is also granted.
`
`-3-
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`-4-
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`Case IPR2013-00413
`Patent 6,738,697
`
`For PETITIONER
`
`Matthew Berkowitz
`Antony Pfeffer
`Thomas Makin
`mberkowitz@kenyon.com
`apfeffer@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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