`571-272-7822
`
` Paper: 10
`
`Date Entered: April 19, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MERCEDES-BENZ USA, LLC,
`Petitioner,
`
`v.
`
`ADAPTIVE HEADLAMP TECHNOLOGIES, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-00501
`Patent 7,241,034 C1
`____________
`
`Before MICHAEL P. TIERNEY, RAMA G. ELLURU, and
`SCOTT C. MOORE, Administrative Patent Judges.
`
`MOORE, Administrative Patent Judge.
`
`DECISION
`Joint Motion to Terminate Proceeding
`35 U.S.C. § 317 and 37 C.F.R. § 42.72
`
`
`
`IPR2016-00501
`Patent 7,241,034 C1
`
`
`
`
`
`I. Introduction
`On April 6, 2016, Petitioner, Mercedes-Benz USA, LLC, and Patent
`
`Owner, Adaptive Headlamp Technologies, Inc. (collectively referred to as
`“the parties”), filed a “Joint Motion to Terminate” this inter partes review
`proceeding. Paper 8 (“Mot.”).1 Along with the Joint Motion to Terminate,
`the parties filed a true copy of their written settlement agreement (Ex. 2001),
`as well as a joint request to have their settlement agreement treated as
`business confidential information under 35 U.S.C. § 317(b) (Paper 9). The
`parties also represent that they have settled the related district court litigation
`between them involving U.S. Patent No. 7,241,034 (the “’034 Patent), and
`intend to seek dismissal of that litigation. Mot. 2. However, other IPR
`petitions and district court litigations involving the ’034 Patent remain
`pending. Id.
`
`II. Discussion
`The parties are reminded that the Board is not a party to the
`
`settlement, and may identify independently any question of patentability.
`37 C.F.R. § 42.74(a). Generally, however, the Board expects that a
`proceeding will terminate after the filing of a settlement agreement. See,
`e.g., Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug.
`14, 2012). 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 the patent owner, unless the Office has
`decided the merits of the proceeding before the request for termination is
`
`
`1 Filing of the Joint Motion to Terminate was authorized in e-mail
`correspondence from Board personnel on April 5, 2016.
`
`
`
`
`
`IPR2016-00501
`Patent 7,241,034 C1
`
`
`filed.” Although we have not yet issued an institution decision, the
`considerations here are similar. We have not decided the merits of this inter
`partes review. Therefore, termination of this review with respect to
`Petitioner is appropriate.
`
`
`Furthermore, under 35 U.S.C. § 317(a), “[i]f 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).” Thus, we also have discretion
`to terminate with respect to Patent Owner. Upon consideration of the
`circumstances of this case, including the fact that the parties sought
`termination at an early stage of the proceeding, the panel has determined to
`terminate this inter partes review as to both Petitioner and Patent Owner.
`
`III. Order
`
`It is
`
`ORDERED that the Joint Motion to Terminate Proceeding (Paper 8)
`
`is granted, and this proceeding is hereby terminated; and
`
`FURTHER ORDERED that, as was requested timely by the parties
`(Paper 9), the settlement agreement (Exhibit 2001) will be treated as
`business confidential information under 35 U.S.C. § 317(b) and 37 C.F.R.
`§ 42.74(c).
`
`
`
`
`
`
`
`2
`
`
`
`
`
`
`
`
`3
`
`
`IPR2016-00501
`Patent 7,241,034 C1
`
`
`For PETITIONER:
`James M. Glass
`jimglass@quinnemanuel.com
`
`Marc Kaplan
`marckaplan@quinnemanuel.com
`
`
`
`For PATENT OWNER:
`Brett M. Pinkus
`pinkus@fsclaw.com
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