UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`Mercedes-Benz USA, LLC,
`Petitioner
`v.
`
`American Vehicular Sciences LLC
`Patent Owner
`____________
`
`Patent No. 6,738,697
`Filing Date: July 3, 2002
`Issue Date: May 18, 2004
`Title: TELEMATICS SYSTEM FOR VEHICLE DIAGNOSTICS
`
`Case No. IPR2014-00645
`
`
`JOINT MOTION TO TERMINATE PROCEEDING
`FOR INTER PARTES REVIEW OF U.S. PATENT NO. 6,738,697
`PURSUANT TO 35 U.S.C. § 317
`
`
`
`
`
`
`
`
`
`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`Mercedes-Benz USA, LLC,
`Petitioner
`v.
`
`American Vehicular Sciences LLC
`Patent Owner
`____________
`
`Patent No. 6,738,697
`Filing Date: July 3, 2002
`Issue Date: May 18, 2004
`Title: TELEMATICS SYSTEM FOR VEHICLE DIAGNOSTICS
`
`Case No. IPR2014-00645
`
`
`JOINT MOTION TO TERMINATE PROCEEDING
`FOR INTER PARTES REVIEW OF U.S. PATENT NO. 6,738,697
`PURSUANT TO 35 U.S.C. § 317
`
`
`
`
`
`
`
`
`
`
`
`Pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.74(a)-(b), Petitioner
`
`JOINT MOTION TO TERMINATE
`IPR2014-00645
`
`
`
`Mercedes-Benz USA, LLC (“Mercedes” or “Petitioner”), and Patent Owner
`
`American Vehicular Sciences LLC (“AVS”) jointly request termination of the Inter
`
`Partes Review (IPR) of U.S. Patent No. 6,738,697, Case No. IPR2014-00645.
`
`Mercedes and AVS are collectively referred to herein as “Parties.” The Parties
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`agree that each party bear its own fees and expenses.
`
`This IPR is in its early stages. Mercedes filed its petition for inter partes
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`review on April 16, 2014. AVS filed a waiver of its right to a preliminary response
`
`on July 24, 2014. The IPR was instituted on August 28, 2014. No depositions have
`
`been taken. The Patent Owner has not filed any substantive paper, and the Patent
`
`Owner has submitted no declaration. The Parties have agreed to settle their dispute
`
`and have reached an agreement to terminate this IPR. The Settlement Agreement
`
`between the parties has been made in writing and is filed separately as Exhibit
`
`2001, concurrently with a 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 Settlement Agreement reflects the parties’ desires that the Board
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`terminate this IPR in its entirety. Accordingly, if the Board elects to continue
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`this IPR in any respect without the Petitioner (instead of a full dismissal), AVS
`
`
`
`1
`
`
`
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`will not participate in any way in this IPR.
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`JOINT MOTION TO TERMINATE
`IPR2014-00645
`
`As stated in 35 U.S.C. § 317(a), because both Mercedes and AVS request
`
`this termination, it is understood that no estoppel under 35 U.S.C. § 315(e) shall
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`attach to Petitioner Mercedes. As provided in 37 C.F.R. § 42.73(d)(3), because no
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`adverse judgment has been entered, it is also understood that, as to Patent Owner
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`AVS, no estoppel under 37 C.F.R. § 42.73(d)(3) shall attach to AVS.
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`On November 18, 2014, the parties advised the Board that the parties had
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`reached a settlement in this IPR, and the parties sought authorization to file a joint
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`motion to terminate the proceeding. On November 19, 2014, the parties received
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`written authorization to file a joint motion to terminate.
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`The parties understood that they were also to file a separate paper requesting
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`that the Settlement Agreement be treated as business confidential information as
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`specified in 37 C.F.R. § 42.74(c).
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`Termination of this proceeding is appropriate as the Parties have agreed to
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`settle their disputes.
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`U.S. Patent No. 6,738,697 is being litigated in the following civil actions,
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`which are at the stages described below:
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` American Vehicular Sciences LLC v. American Honda Motor Co., Inc.
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`et al., No. 2:14-CV-13251 (E.D. Mich.), was transferred to the Eastern
`
`
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`2
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`
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`JOINT MOTION TO TERMINATE
`IPR2014-00645
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`District of Michigan in 2014, and is in its early stages.
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` American Vehicular Sciences LLC v. Hyundai Motor Co. et al., No.
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`2:14-CV-13247 (E.D. Mich.), was transferred to the Eastern District of
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`Michigan in 2014, and is in its early stages.
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` American Vehicular Sciences LLC v. Kia Motors America, Inc. et al.,
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`No. 2:14-CV-13249 (E.D. Mich.), was transferred to the Eastern
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`District of Michigan in 2014, and is in its early stages.
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`U.S. Patent No. 6,738,697 is also the subject of IPR2014-00634 filed by
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`America Honda Motor Co., which was instituted on August 26, 2014.
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`No litigation or proceeding involving U.S. Patent No. 6,738,697 other than
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`that identified above is contemplated in the foreseeable future.
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`Wherefore, AVS and Mercedes respectfully request termination of the Inter
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`Partes Review of U.S. Patent No. 6,738,697, Case No. IPR2014-00645.
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`Dated: November 19, 2014
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`
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`Respectfully submitted,
`
`/Thomas J. Wimbiscus/
`
`
`
`
`
`Thomas J. Wimbiscus (Reg. No. 36,059)
`
`Scott P. McBride (Reg. No. 42,835)
`McANDREWS, HELD & MALLOY, LTD.
`500 West Madison St., 34th Floor
`Chicago, IL 60661
`Telephone: (312) 775-8000
`Attorney for Patent Owner
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`
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`3
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`
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`JOINT MOTION TO TERMINATE
`IPR2014-00645
`
`American Vehicular Sciences LLC
`
`
`/Scott W. Doyle/
`
`
`Scott W. Doyle (Reg. No. 391,76)
`scott.doyle@shearman.com
`Shearman & Sterling LLP
`801 Pennsylvania Ave., NW
`Ste. 900
`Washington, DC 20004
`T: (202) 508-8000
`Attorney for Petitioner
`Mercedes-Benz USA, LLC
`
`
`
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`4
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`
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`JOINT MOTION TO TERMINATE
`IPR2014-00645
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`CERTIFICATE OF SERVICE
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`I hereby certify that Joint Motion to Terminate Proceedings was served on
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`this 19th day of November by electronic mail to the following:
`
`Lead Counsel
`Scott W. Doyle (Reg. No. 39176)
`scott.doyle@shearman.com
`Shearman & Sterling LLP
`801 Pennsylvania Ave., NW
`Ste. 900
`Washington, DC 20004
`T: (202) 508-8000
`
`
`Back-up Counsel
`Jonathan R. DeFosse (admitted pro hac vice)
`jonathan.defosse@shearman.com
`Shearman & Sterling LLP
`801 Pennsylvania Ave., NW
`Ste. 900
`Washington, DC 20004
`T: (202) 508-8000
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`
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`
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`MCANDREWS HELD & MALLOY
`
`
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`
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`Telephone: 312-775-8000
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`
`Facsimile: 312-775-8100
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`
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`CUSTOMER NUMBER: 23446
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`Date: November 19, 2014
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`/Thomas J. Wimbiscus/
`Thomas J. Wimbiscus
`Registration No. 36,059
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`5
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