`Tel: 571-272-7822
`
`
`Paper 12
`Entered: December 15, 2014
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MERCEDES-BENZ USA, LLC and MERCEDES-BENZ U.S.
`INTERNATIONAL, INC.,
`Petitioner,
`
`v.
`
`VELOCITY PATENT LLC,
`Patent Owner.
`____________
`
` IPR2014-01247
`Patent 5,954,781
`____________
`
`Before JAMESON LEE, GLENN J. PERRY, and PETER P.
`CHEN, Administrative Patent Judges.
`
`CHEN, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`IPR2014-01247
`Patent 5,954,781
`
`
`
`
`On December 12, 2014, a conference call was held among the
`
`respective counsel for the parties and Judges Lee, Perry, and Chen. The
`
`subject matter of the call concerned Petitioner’s request for authorization to
`
`file a motion for consolidation of this proceeding with IPR 2015-00290, and
`
`with ex parte reexamination proceeding 90/013,252 (“the reexamination
`
`proceeding”), all of which involve U.S. Patent No. 5,954,781 (“the ’781
`
`patent”).
`
`The Petition herein was filed on August 4, 2014 (Paper 1),
`
`challenging only claims 31 and 32 of the ’781 patent. In its Preliminary
`
`Response filed on November 4, 2014 (Paper 9), Patent Owner stated that in
`
`the reexamination proceeding, Patent Owner had “amended independent
`
`claim 31 and, by virtue of its dependency, claim 32.” Id.
`
`On November 21, 2014, Petitioner filed IPR 2015-00290, challenging
`
`claims 31 and 32 “as currently amended” in the reexamination proceeding,
`
`along with claims 61-80 and 82-84, which had been added in the
`
`reexamination proceeding by Patent Owner. Mercedes-Benz USA, LLC and
`
`Mercedes-Benz International, LLC v. Velocity Patent LLC, IPR 2015-00290
`
`(Paper 2, 1).
`
`Patent Owner stated during the conference call that no reexamination
`
`certificate has been issued as a result of the reexamination proceeding.
`
`Patent Owner further stated that on December 10, 2014, it filed in the
`
`reexamination proceeding a statutory disclaimer of original patent claims 31
`
`and 32, which are the only claims challenged by the Petition in this
`
`proceeding. In addition, Patent Owner indicated that its proposed amended
`
`claims 31 and 32 of the ’781 patent, and claims 61-84, which are all of the
`
`claims being challenged in IPR 2015-00290, have also been cancelled in the
`
`
`
`2
`
`
`
`IPR2014-01247
`Patent 5,954,781
`
`reexamination proceeding. We authorized Patent Owner to file promptly in
`
`
`
`this proceeding, a request or motion to cancel claims 31 and 32 of the ’781
`
`patent. Counsel for Patent Owner indicated that Patent Owner will file such
`
`a request in this proceeding.
`
`We do not authorize Petitioner to file a motion seeking to consolidate
`
`this proceeding with IPR 2015-00290 and/or with the reexamination. Given
`
`the indication from counsel for Patent Owner that Patent Owner will file a
`
`motion or request to cancel patent claims 31 and 32, which are all of the
`
`challenged claims in this proceeding, we likely will be entering adverse
`
`judgment against Patent Owner shortly, without need of significant further
`
`action in this proceeding. Accordingly, consolidation of this proceeding
`
`with IPR 2015-00290 and/or the reexamination proceeding is neither
`
`necessary nor appropriate.
`
`ORDER
`
`
`
`It is
`
`ORDERED that Patent Owner is authorized to file, by December 22,
`
`2014, a request or motion in this proceeding, cancelling claims 31 and 32 of
`
`the ’781 patent; and
`
`FURTHER ORDERED that Patent Owner shall file, as an exhibit, a
`
`copy of the Statutory Disclaimer filed in the reexamination proceeding, by
`
`December 22, 2014.
`
`
`
`
`
`
`
`
`
`
`
`3
`
`
`
`
`
`IPR2014-01247
`Patent 5,954,781
`
`
`PETITIONER:
`
`Celine Crowson
`Celine.crowson@hoganlovells.com
`
`Joseph Raffetto
`Joseph.raffetto@hoganlovells.com
`
`Raymond Kurz
`Raymond.kurz@hoganlovells.com
`
`PATENT OWNER:
`
`Patrick Richards
`Patrick@richardspatentlaw.com
`
`Howard Levin
`hlevin@mavllp.com
`
`
`
`
`4
`
`
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