`571-272-7822
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` Paper 22
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`Entered: December 12, 2014
`
`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.
`
`
`Case IPR2014-00645
`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 November 19, 2014, the parties filed a Joint Motion to Terminate
`Proceeding, pursuant to 35 U.S.C. § 317, with respect to both Petitioner
`(“Mercedes-Benz”) and Patent Owner (“AVS”). Paper 19. Also on November 19,
`2014, the parties filed a copy of their written settlement agreement (Ex. 2001)
`covering U.S. Patent No. 6,738,697 (“the ’697 patent”) involved in this inter partes
`review, and a joint request to have their settlement agreement treated as
`
`
`
`Case IPR2014-00645
`Patent 6,738,697 B2
`
`confidential business information under 35 U.S.C. § 317(b) and 37 C.F.R.
`§ 42.74(c) (Paper 20). The parties represent that there are no collateral agreements
`referred to in their settlement agreement. Paper 19, 1.
`
`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 Petitioner 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).” Mercedes-Benz is the sole petitioner in this review. The
`Board has discretion to terminate this review with respect to AVS as Patent Owner.
`
`In a conference call held on December 11, 2014, among respective counsel
`for the parties and Judges Lee, Parvis, and Anderson, the parties indicated that all
`related civil actions between Mercedes-Benz and AVS, involving the ’697 patent,
`have been dismissed, including American Vehicular Sciences LLC v. Mercedes-
`Benz U.S. Intl., Inc., No. 6:13-cv-00310 (E.D. Tex.). The joint motion identifies
`other related actions involving Patent No. 6,738,697, and defendants other than
`Mercedes-Benz, which still remain pending. Paper 19, 2–3. 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 proceeding. The
`Board determines that in these circumstances it is appropriate to terminate review
`both as to Mercedes-Benz and AVS without rendering a final written decision See
`35 U.S.C. § 317(a); 37 C.F.R. § 42.72.
`
`-2-
`
`
`
`
`
`Case IPR2014-00645
`Patent 6,738,697 B2
`
`It is
`
`ORDERED that the joint motion to terminate IPR2014-00645 is granted,
`
`and this inter partes review is hereby terminated as to all parties including
`Mercedes-Benz as the Petitioner and AVS as the Patent Owner; and
`
`FURTHER ORDERED that the parties’s joint request (Paper 20) to have
`their settlement agreement (Exhibit 2001) treated as business confidential
`information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) is also granted.
`
`
`
`
`
`
`
`For PETITIONER
`Scott Doyle
`Jonathan DeFosse
`scott.doyle@shearman.com
`jonathan.defosse@shearman.com
`
`For PATENT OWNER
`
`Thomas Wimbiscus
`Scott McBride
`Christopher Scharff
`twimbiscus@mcandrews-ip.com
`smcbride@mcandrews-ip.com
`cscharff@mcandrews-ip.com
`
`
`
`-3-
`
`
`
`
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