`Trials@uspto.gov
`571-272-7822 Entered: January 15, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AMERICAN HONDA MOTOR CO., INC.,
`Petitioner,
`
`v.
`
`AMERICAN VEHICULAR SCIENCES LLC,
`Patent Owner.
`____________
`
`Case IPR2014-00620
`Patent 8,235,416 B2
`____________
`
`
`Before JAMESON LEE, MICHAEL W. KIM, and
`LYNNE E. PETTIGREW, Administrative Patent Judges.
`
`PETTIGREW, Administrative Patent Judge.
`
`
`JUDGMENT
`Termination of the Proceeding
`37 C.F.R. § 42.72
`
`
`On December 31, 2014, American Honda Motor Co., Inc.
`(“Petitioner”) and American Vehicular Sciences LLC (“Patent Owner”) filed
`a joint motion to terminate this proceeding. Paper 14. Along with the
`motion, the parties filed a copy of a written settlement agreement (Ex. 2001)
`
`
`
`IPR2014-00620
`Patent 8,235,416 B2
`
`and a request to treat the settlement agreement as business confidential
`information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). Paper 15.
`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.” Further,
`“[i]f no petitioner remains in the inter partes review, the Office may
`terminate the review or proceed to a final written decision under section
`318(a).” 35 U.S.C. § 317(a).
`We instituted inter partes review on September 18, 2014. Paper 9.
`Since institution, the parties have filed no substantive papers, and the parties
`indicate that no depositions have been taken. Paper 14, 1. Thus, this review
`is in its early stages.
`The parties indicate they have agreed to settle their dispute and have
`reached an agreement to terminate this review, as memorialized in a written
`settlement agreement. Id.; Ex. 2001. The parties further indicate that U.S.
`Patent No. 8,235,416 is the subject of the following civil action: American
`Vehicular Sciences LLC v. American Honda Motor Co., Inc., 2:14-cv-13252
`(E.D. Mich.). Paper 14, 2–3. According to the joint motion to terminate, all
`claims of that civil action will be dismissed with prejudice as a result of the
`settlement agreement. Id. In addition, the parties state that if the Board
`elects to continue the review in any respect without Petitioner, Patent Owner
`will not participate in any way in the review. Id. at 1–2.
`Based on the circumstances presented in this case, we determine it is
`appropriate to terminate the proceeding with respect to both Petitioner and
`
`2
`
`
`
`IPR2014-00620
`Patent 8,235,416 B2
`
`Patent Owner without rendering a final written decision. See 37 C.F.R.
`§ 42.72.
`
`Accordingly, it is:
` ORDERED that the joint motion to terminate the proceeding is
`granted;
` FURTHER ORDERED that the joint motion to file the settlement
`agreement as business confidential information, to be kept separate from the
`patent file, is granted; and
` FURTHER ORDERED that the proceeding is terminated.
`
`FOR PETITIONER:
`Joseph Melnik
`Joseph M. Beauchamp
`H. Albert Liou
`Jones Day
`jmelnik@jonesday.com
`jbeauchamp@jonesday.com
`aliou@jonesday.com
`
`FOR PATENT OWNER:
`
`Thomas J. Wimbiscus
`Scott P. McBride
`Christopher M. Scharff
`McAndrews Held & Malloy
`twimbiscus@mcandrews-ip.com
`smcbride@mcandrews-ip.com
`cscharff@mcandrews-ip.com
`
`3
`
`
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