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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`VOLKSWAGEN GROUP OF AMERICA, INC.,
`MERCEDES-BENZ USA, LLC, and FORD MOTOR COMPANY,1
`Petitioners,
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`v.
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`NEO WIRELESS, LLC,
`Patent Owner.
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`IPR2022-01539
`Patent 10,965,512 B2
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`JOINT MOTION TO TERMINATE PROCEEDING
`WITH RESPECT TO PETITIONER MERCEDES-BENZ USA, LLC
`PURSUANT TO 35 U.S.C. § 317 AND 37 C.F.R. § 42.74
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`
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`1 Mercedes-Benz USA, LLC filed a motion for joinder and a petition in IPR2023-
`00079, and Ford Motor Company filed its own motion for joinder and petition in
`IPR2023-00764. Both motions were granted, and, therefore, Mercedes-Benz USA,
`LLC and Ford Motor Company have been joined as petitioners in this proceeding.
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`1
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`STATEMENT OF RELIEF REQUESTED
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`Pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.74, Petitioner Mercedes-
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`Benz USA, LLC (“Mercedes”) and Patent Owner Neo Wireless LLC (“Neo”)
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`jointly request termination of this proceeding with respect to Mercedes as a result
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`of a Patent License and Settlement Agreement that resolves all pending disputes
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`between Mercedes and Neo. Mercedes and Neo note that granting this motion will
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`not result in termination of the proceeding in its entirety, because Petitioners
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`Volkswagen Group of America, Inc. (“VW”) and Ford Motor Company (“Ford”)
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`are not requesting termination. The Board authorized filing of this Joint Motion via
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`email on July 28, 2023.
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`Mercedes and Neo are further filing concurrently herewith a request that the
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`Patent License and Settlement Agreement, filed herewith as Exhibit 2100, be kept
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`confidential and separate from the file, pursuant to 35 U.S.C. § 317(b) and 37
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`C.F.R. § 42.74(c). The Patent License and Settlement Agreement is being filed as
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`“Available only to Board” in order to preserve confidentiality, including so that the
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`other Petitioner (i.e., VW and Ford) does not have access to the agreement.
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`STATEMENT OF FACTS
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`On July 15, 2022, Neo asserted U.S. Patent No. 10,965,512 (the “’512
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`Patent”) against Mercedes in an action entitled Neo Wireless LLC v. Mercedes-
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`Benz USA, LLC, Case No. 3:22-cv-00780 (M.D. Fla.), which was conditionally
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`2
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`transferred to the Eastern District of Michigan for consolidated pretrial
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`proceedings, as part of a multi-district litigation, in actions entitled In re Neo
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`Wireless LLC Patent Litig., Case No. 2:22-md-03034 (E.D. Mich.) and Neo
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`Wireless, LLC v. Mercedes-Benz USA, LLC, Case No. 2:22-cv-11769 (E.D. Mich.).
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`The district court cases have since been dismissed with prejudice as to Mercedes,
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`as part of the parties’ settlement. Mercedes filed its petition for inter partes review
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`of the ’512 Patent on October 19, 2022, along with a motion to join IPR2022-
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`01539 filed by VW. The Board granted institution of inter partes review and
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`Mercedes’s motion for joinder on May 5, 2023. Similarly, Ford filed its petition for
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`inter partes review of the ’512 Patent on March 28, 2023, along with a motion to
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`join IPR2022-01539 filed by VW. The Board granted institution of inter partes
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`review and Ford’s motion for joinder on July 17, 2023.
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`A Patent License and Settlement Agreement has been reached which
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`resolves all underlying disputes between Neo and Mercedes, including those
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`related to this proceeding and the related district court proceedings involving the
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`’512 Patent. A true and correct copy of the Patent License and Settlement
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`Agreement is attached as Exhibit 2100.
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`ARGUMENT
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`Pursuant to 35 U.S.C. § 317(a), “[a]n inter partes review shall be terminated
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`with respect to any petitioner upon the joint request of the petitioner and the patent
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`3
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`owner, unless the Office has decided the merits of the proceeding before the
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`request for termination is filed.” See also 37 C.F.R. § 42.72 (“The Board may
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`terminate a trial without rendering a final written decision, where appropriate,
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`including where the trial is consolidated with another proceeding or pursuant to a
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`joint request under 35 U.S.C. 317(a) or 327(a).”).
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`As noted above, pursuant to 35 U.S.C. § 317(a)-(b), Mercedes and Neo
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`request termination of this proceeding with respect to Mercedes and are filing
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`herewith a confidential Patent License and Settlement Agreement as Exhibit 2100,
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`which resolves all disputes between Mercedes and Neo. Mercedes and Neo certify
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`that there are no other collateral agreements or understandings between them made
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`in connection with, or in contemplation of, termination of this proceeding.
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`Mercedes and Neo request that the Patent License and Settlement Agreement be
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`kept separate from the file and treated as business confidential information, and are
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`submitting herewith a Joint Motion to Keep Confidential And Separate Pursuant to
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`35 U.S.C. § 317 and 37 C.F.R. § 42.74.
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`Termination is appropriate as to Mercedes because the Board has not yet
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`decided the merits of this inter partes review. Indeed, a Final Written Decision is
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`not due until May 2, 2024, one year from institution. (Paper 7, Institution Decision
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`dated May 2, 2023). And, as Mercedes has assumed an understudy role, its
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`termination will not affect the proceeding going forward.
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`Moreover, no other party’s rights would be prejudiced by the termination of
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`this inter partes review as to Mercedes. Petitioners VW and Ford remains active in
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`this proceeding. As Mercedes agreed to take an understudy role to VW, Mercedes
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`being terminated from this proceeding will have no effect on the remaining parties.
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`Accordingly, Mercedes and Neo respectfully request that the Board grant
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`this Joint Motion to Terminate as to Mercedes.
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`Dated: August 2, 2023
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` Respectfully submitted,
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`
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`/s/ Kenneth J. Weatherwax
`Kenneth J. Weatherwax, Reg. No. 54,528
`Lowenstein & Weatherwax LLP
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`Counsel for Patent Owner Neo Wireless, LLC
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`/s/ Celine J. Crowson
`Celine Jimenez Crowson (Reg. No. 40,357)
`Joseph J. Raffetto (Reg. No. 66,218)
`Scott Hughes (Reg. 68,385)
`Helen Y. Trac (Reg. No. 62,250)
`HOGAN LOVELLS US LLP
`555 13th Street N.W.
`Washington, D.C. 20004
`Telephone: 202.637.5600
`Facsimile: 202.637.5910
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`Counsel for Petitioner
`Mercedes-Benz USA, LLC
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that a copy of the following document was served
`via electronic service, by consent between the parties:
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`JOINT MOTION TO KEEP CONFIDENTIAL AND SEPARATE
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`PURSUANT TO 35 U.S.C. § 317 AND 37 C.F.R. § 42.74
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`The names and address of the parties being served are as follows:
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`Celine J. Crowson
`Joseph J. Raffeto
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`Scott Hughes
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`Helen Y. Trac
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`Ryan C. Richardson
`Michael D. Specht
`Daniel E. Yonan
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`David Haars
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`celine.crowson@hoganlovells.com
`joseph.raffeto@hoganlovells.com
`scott.hughes@hoganlovells.com
`helen.trac@hoganlovells.com
`rrichardson-PTAB@sternkessler.com
`mspecht-PTAB@sternkessler.com
`dyonan-PTAB@sternkessler.com
`dhaars-PTAB@sternkessler.com
`PTAB@sternkessler.com
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`The following document containing confidential business information of the
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`parties to the Joint Motion was filed Board And Filing Party Only. Accordingly,
`the undersigned certifies that the following document was served via electronic
`service, by consent between the parties, only on counsel of record for those parties:
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`EXHIBIT 2100
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`The names and address of the parties being served are as follows:
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`Celine J. Crowson
`Joseph J. Raffeto
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`Scott Hughes
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`Helen Y. Trac
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`celine.crowson@hoganlovells.com
`joseph.raffeto@hoganlovells.com
`scott.hughes@hoganlovells.com
`helen.trac@hoganlovells.com
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`Respectfully submitted,
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` / William Katz /
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`Date: August 2, 2023
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