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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`Mercedes-Benz USA, LLC,
`Petitioner
`v.
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`American Vehicular Sciences LLC
`Patent Owner
`____________
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`Patent No. 6,772,057
`Filing Date: November 22, 2002
`Issue Date: August 3, 2004
`Title: VEHICULAR MONITORING SYSTEMS USING IMAGE PROCESSING
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`Case No. IPR2014-00646
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`JOINT MOTION TO TERMINATE PROCEEDING
`FOR INTER PARTES REVIEW OF U.S. PATENT NO. 6,772,057
`PURSUANT TO 35 U.S.C. § 317
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`Pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.74(a)-(b), Petitioner
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`JOINT MOTION TO TERMINATE
`IPR2014-00646
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`Mercedes-Benz USA, LLC (“Mercedes” or “Petitioner”), and Patent Owner
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`American Vehicular Sciences LLC (“AVS”) jointly request termination of the Inter
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`Partes Review (IPR) of U.S. Patent No. 6,772,057, Case No. IPR2014-00646.
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`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.
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`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 its preliminary response on July 24, 2014. The
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`IPR was instituted on October 23, 2014. No depositions have been taken. The
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`Patent Owner has not filed any substantive paper, and the Patent Owner has
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`submitted no declaration. The Parties have agreed to settle their dispute and have
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`reached an agreement to terminate this IPR. The Settlement Agreement between
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`the parties has been made in writing and is filed separately as Exhibit 2001,
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`concurrently with a Joint Request to Treat Agreement as Business Confidential
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`Information Under 35 U.S.C. § 317 (b) and 37 C.F.R. § 42.74 (c). There are no
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`collateral agreements referred to in the Parties’ Settlement Agreement.
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`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
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`will not participate in any way in this IPR.
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`JOINT MOTION TO TERMINATE
`IPR2014-00646
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`As stated in 35 U.S.C. § 317(a), because both Mercedes and AVS request
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`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. 6,772,057 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. Toyota Motor Corp., et al., No.
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`2:14-CV-13019 (E.D. Mich.), was transferred to the Eastern District of
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`JOINT MOTION TO TERMINATE
`IPR2014-00646
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`Michigan in 2014, and is in its early stages.
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` American Vehicular Sciences LLC v. Subaru of America, Inc. No.
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`6:13-CV-00230 (E.D. Tex.), is in its early stages.
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`U.S. Patent No. 6,772,057 is also the subject of:
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` IPR2013-00419 filed by Toyota Motor Corporation, which was
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`instituted on January 13, 2014 and argued before the Board on August
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`18, 2014 and is awaiting final written decision;
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` IPR2015-00261 filed by Toyota Motor Corporation on November 17,
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`2014 with a motion to join the IPR that is the subject of this Joint
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`Motion to Terminate (No. IPR2014-00646); and
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` An ex parte reexamination filed by Toyota Motor Corporation on
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`November 13, 2014, for which no control number was available as of
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`the preparation of this filing.
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`No litigation or proceeding involving U.S. Patent No. 6,772,057 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. 6,772,057, Case No. IPR2014-00646.
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`JOINT MOTION TO TERMINATE
`IPR2014-00646
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`Respectfully submitted,
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`/Thomas J. Wimbiscus/
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`Dated: November 19, 2014
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`Thomas J. Wimbiscus (Reg. No. 36,059)
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`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
`American Vehicular Sciences LLC
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`/Scott W. Doyle/
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`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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`JOINT MOTION TO TERMINATE
`IPR2014-00646
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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:
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`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
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`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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`/Thomas J. Wimbiscus/
`Thomas J. Wimbiscus
`Registration No. 36,059
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`MCANDREWS HELD & MALLOY
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`Telephone: 312-775-8000
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`Facsimile: 312-775-8100
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`CUSTOMER NUMBER: 23446
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`Date: November 19, 2014
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