UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`MERCEDES-BENZ USA LLC
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`Petitioner,
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`v.
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`ADAPTIVE HEADLAMP TECHNOLOGIES, INC.,
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`Listed Patent Owner.
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`____________
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`U.S. Patent No. 7,241,034
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`“Automatic Directional Control System for Vehicle Headlights”
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`____________
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`JOINT MOTION TO TERMINATE PROCEEDING PURSUANT TO 35
`U.S.C. § 317(A)
`
`Inter Partes Review No. 2016-00501
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`05142-00006/7828565.1
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`
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`MERCEDES-BENZ USA LLC
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`Petitioner,
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`v.
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`ADAPTIVE HEADLAMP TECHNOLOGIES, INC.,
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`Listed Patent Owner.
`
`____________
`
`U.S. Patent No. 7,241,034
`
`“Automatic Directional Control System for Vehicle Headlights”
`
`____________
`
`JOINT MOTION TO TERMINATE PROCEEDING PURSUANT TO 35
`U.S.C. § 317(A)
`
`Inter Partes Review No. 2016-00501
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`05142-00006/7828565.1
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`
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`Case IPR2016-00501
`Motion to Terminate Proceeding
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`Pursuant to 35 U.S.C. § 317(a), Petitioner Mercedes-Benz USA (“MBUSA” or
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`Petitioner) and Patent Owner Adaptive Headlamp Technologies, Inc. (“AHT” or
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`Patent Owner) jointly request termination of IPR2016-00501, which is directed to
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`U.S. Patent No. 7,241,034 (the “’034 Patent”).
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`I.
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`
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`Statement of Precise Relief Requested
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`Pursuant to 35 U.S.C. § 317(a), Petitioner and Patent Owner jointly request
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`termination of this inter partes review pursuant to a settlement.
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`II.
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`Statement of Facts
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`
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`No decision on institution has been issued yet in this case. Further, Petitioner
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`and Patent Owner have reached an agreement to settle this inter partes review
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`proceeding. A “Joint Motion of Petitioner and Patent Owner to File Settlement
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`Agreement as Business Confidential Information Under 35 U.S.C. § 317 and 37
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`C.F.R. §42.74” is being filed concurrently with this Joint Motion to Terminate in
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`reference to sealing of the settlement agreement. See 35 U.S.C. 317(b) (requiring
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`parties to file agreements in writing with the Office).
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`A joint motion to terminate generally “must (1) include a brief explanation as
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`to why termination is appropriate; (2) identify all parties in any related litigation
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`involving the patents at issue; (3) identify any related proceedings currently before
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`the Office, and (4) discuss specifically the current status of each such related
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`litigation or proceeding with respect to each party to the litigation or proceeding.”
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`05142-00006/7828565.1
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`1
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`Case IPR2016-00501
`Motion to Terminate Proceeding
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`Heartland Tanning, Inc. v. Sunless, Inc., IPR2014-00018, Paper 26 at 2 (PTAB Jul.
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`28, 2014).
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`In response to the first requirement, termination is appropriate in this case
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`because the parties have settled their dispute in the related district court action. A
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`“Joint Motion of Petitioner and Patent Owner to File Settlement Agreement as
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`Business Confidential Information Under 35 U.S.C. § 317 and 37 C.F.R. §42.74” is
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`being filed concurrently with this Joint Motion to Terminate in reference to sealing of
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`the settlement agreement. In response to the second requirement, the Petitioner and
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`the Patent Owner are the parties to a related district court action, case no. 1:15-cv-
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`00075 (D. Del.). Petitioner and Patent owner understand that the ’034 patent has
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`been asserted in other district court litigations where Petitioner is not a named party.
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`In response to the third requirement, Petitioner and Patent Owner are aware of
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`pending inter partes reexaminations of the ’034 Patent: IPR2016-00079; IPR2016-
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`00193; and IPR2016-00196. In response to the fourth requirement, with respect to
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`proceedings before the Patent Office, the pending inter partes reexaminations were
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`requested by Koito Manufacturing Co., Ltd., SL Corporation, and BMW or North
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`America, LLC. None of the pending inter partes reexaminations have been
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`instituted. With respect to the district court litigation between Petitioner and Patent
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`Owner, the parties intend to file a joint motion to dismiss.
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`05142-00006/7828565.1
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`2
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`Case IPR2016-00501
`Motion to Terminate Proceeding
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`III. Argument
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`
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`The Board should terminate this case as the parties jointly request, for the
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`following reasons. First, Petitioner and Patent Owner have met the statutory
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`requirement that they file a “joint request” to terminate before the office “has
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`decided the merits of the proceeding.” 35 U.S.C. § 317(a). Under section 317(a), an
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`inter partes review shall be terminated upon such joint request “unless the Office has
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`decided the merits of the proceeding before the request for termination is filed.”
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`There are no other preconditions of 35 U.S.C. § 317(a). And in this proceeding, a
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`decision on initiation is still months away.
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`
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`Second, the parties have reached a settlement as to all the disputes in this
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`proceeding and as to the ’034 Patent. A true copy of the agreement is filed
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`concurrently herewith. See Ex. 2001. The parties request that the settlement
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`agreement be treated as business confidential information, and be kept separate from
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`the files of this proceeding in accordance with 37 C.F.R. § 42.74(c ). The parties
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`further jointly certify that there are no other written or oral agreements or
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`understandings, including any collateral agreements, between them, including but not
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`limited to licenses, covenants not to sue, confidentiality agreements, payment
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`agreements, or other agreements of any kind, that are made in connection with or in
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`contemplation of, the termination of the instant proceeding.
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`05142-00006/7828565.1
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`3
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`
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`Case IPR2016-00501
`Motion to Terminate Proceeding
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`Third, a termination of this proceeding will preserve the Board’s resources and
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`obviate the need for any more Board involvement in this matter.
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`IV. Statement of Patent Owner Regarding Assignment of Ownership and
`Authority of Representation
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`
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`Pursuant to 37 C.F.R. 3.73(c), Patent Owner identifies Reel/Frame number
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`32763-91, 32747-12, 32746-229, 32582-373, 29557-220, 24045-235, 22813-432,
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`20540-476, and 13729-559 regarding assignment of the ’034 Patent from the
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`inventors its initial assignee, Dana Corporation, and ultimately to Patent Owner.
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`Patent Owner has therefore specified where documentary evidence of a chain of title
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`from the original owner to the Patent Owner is recorded in the assignment records of
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`the Patent Office, pursuant to 37 C.F.R. 3.73(c).
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`V. Conclusion
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`
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`For the foregoing reasons, Petitioner and Patent Owner respectfully request
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`termination of this inter partes review of the ’034 Patent.
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`05142-00006/7828565.1
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`4
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`
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`Case IPR2016-00501
`Motion to Terminate Proceeding
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`Respectfully submitted,
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`/James M. Glass/
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`
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`James M. Glass
`Reg. No. 46729
`Quinn Emanuel Urquhart & Sullivan
`LLP
`51 Madison Ave, 22nd Fl.
`New York, NY 10010
`Tel:
`(212) 849-7000
`Fax: (212) 849-7100
`Reg. No. 46729
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`Attorney for Petitioner
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`
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`/Brett M. Pinkus/
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`Brett M. Pinkus (Reg. No. 59,980)
`Friedman, Suder & Cooke
`604 E. Fourth Street, Suite 200
`Fort Worth, TX 76102
`Phone: (817) 334-0400
`Fax: (817) 334-0401
`pinkus@fsclaw.com
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`Attorney for Patent Owner
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`Dated: April 5, 2016
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`Dated: April 5, 2016
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`05142-00006/7828565.1
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`5
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`Case IPR2016-00501
`Motion to Terminate Proceeding
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`CERTIFICATE OF SERVICE
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`The undersigned certifies service pursuant to 37 C.F.R. §§ 42.6(e) and 42.105
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`on the Patent Owner on a CD by UPS Next Day Air of a copy of this Joint Motion to
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`Terminate Proceedings and supporting materials at the correspondence address of
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`record for the ’034 patent:
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`The Caldwell Firm, LLC
`Patrick Caldwell
`PO Box 59655
`Dept. SVIPGP
`Dallas TX 75229
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`and via electronic mail to litigation counsel for the patent owner:
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`
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`David W. deBruin
`ddebruin@thedebruinfirm.com
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`Brett M. Pinkus
`pinkus@fsclaw.com
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`Jonathan T. Suder
`jts@fsclaw.com
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`
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`Dated: April 5, 2016
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` By: /James Glass/
`James Glass
`(Reg. No. 46729)
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`05142-00006/7828565.1
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