`571-272-7822
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`Paper 23
`Entered: December 16, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`AMERICAN HONDA MOTOR CO., INC.,
`HYUNDAI MOTOR COMPANY,
`Petitioners,
`
`v.
`
`AMERICAN VEHICULAR SCIENCES LLC,
`Patent Owner.
`
`
`Case IPR2014-00634
`Case IPR2014-01543
`Patent 6,738,697 B2
`
`
`Before JAMESON LEE, BARBARA A. PARVIS, and
`GREGG I. ANDERSON, Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
`
`
`ORDER
`Termination of Proceeding
`37 C.F.R. § 42.72
`
`
`On December 8, 2014, Petitioners and Patent Owner filed a Joint Motion to
`Terminate Proceeding, pursuant to 35 U.S.C. § 317, with respect to both
`Petitioners (“Honda and Hyundai”) and Patent Owner (“AVS”). Paper 19.
`
`On December 8, American Honda Motor Co., Inc. and AVS filed a copy of
`their written settlement agreement (Ex. 2001) covering U.S. Patent No. 6,738,697
`
`
`
`Case IPR2014-00634 and Case IPR2014-01543
`Patent 6,738,697 B2
`
`(“the ’697 patent”) involved in this inter partes review, and a joint request to have
`their settlement agreement treated as confidential business information under
`35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) (Paper 20).
`
`On December 8, Hyundai Motor Company and AVS filed a copy of their
`written settlement agreement (Ex. 2002) covering the ’697 patent involved in this
`inter partes review, and a joint request to have their settlement agreement treated
`as confidential business information under 35 U.S.C. § 317(b) and 37 C.F.R.
`§ 42.74(c) (Paper 21).
`
`The parties collectively represent that there are no collateral agreements
`referred to in their settlement agreement. Paper 19, 2.
`
`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.” The requirement for
`terminating review with respect to Petitioners, Honda and Hyundai, is met.
`
`Under 35 U.S.C. § 317(a), “If 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).” Honda and Hyundai are the only petitioners in this
`consolidated review. The Board has discretion to terminate this review with
`respect to AVS as Patent Owner. On this record, there is no pending motion by
`any third party for joinder with this inter partes review.
`
`AVS has not yet filed a Patent Owner Response in this consolidated
`proceeding. As of the date of filing of the Joint Motion to Terminate Proceeding,
`no cross-examination of witnesses had taken place. Paper 19, 1. AVS indicates
`
`-2-
`
`
`
`
`
`Case IPR2014-00634 and Case IPR2014-01543
`Patent 6,738,697 B2
`
`that if this proceeding is not terminated as to AVS, it will, nonetheless, still not
`participate in any way in the continued review. Paper 19, 2. The parties indicate
`that in each related civil action involving the ’697 patent, all claims pertaining to
`the ’697 patent will be dismissed with prejudice. Paper 19, 3–4. The Board
`determines that in these circumstances it is appropriate to terminate review as to all
`parties including Honda and Hyundai, and AVS, without rendering a final written
`decision See 35 U.S.C. § 317(a); 37 C.F.R. § 42.72.
`
`It is
`
`ORDERED that the joint motion to terminate this consolidated proceeding
`IPR2014-00634 and IPR2014-01543, without rendering a final written decision, is
`granted, and that this inter partes review is hereby terminated as to all parties
`including Honda and Hyundai as Petitioners and AVS as the Patent Owner;
`
`FURTHER ORDERED that the request to treat the settlement agreement
`between AVS and American Honda Motor Co., Inc. (Ex. 2001) treated as business
`confidential information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) is
`granted; and
`
`FURTHER ORDERED that the request to treat the settlement agreement
`between AVS and Hyundai Motor Company (Ex. 2002) treated as business
`confidential information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) is
`granted.
`
`-3-
`
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`
`
`Case IPR2014-00634 and Case IPR2014-01543
`Patent 6,738,697 B2
`
`For PETITIONER American Honda Motor Co., Inc.:
`Joseph Melnik
`Joseph Beauchamp
`H. Albert Liou
`JONES DAY
`jmelnik@jonesday.com
`jbeauchamp@jonesday.com
`aliou@jonesday.com
`
`
`
`For PETITIONER Hyundai Motor Company:
`Edward Naidich
`Christopher Kurpinski
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`ed.naidich@finnegan.com
`christopher.kurpinski@finnegancom
`
`
`
`
`
`For PATENT OWNER:
`Thomas Wimbiscus
`Scott McBride
`Christopher Scharff
`MCANDREWS HELD & MALLOY, LTD.
`twimbiscus@mcandrews-ip.com
`smcbride@mcandrews-ip.com
`cscharff@mcandrews-ip.com
`
`-4-
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