UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`VOLKSWAGEN GROUP OF AMERICA, INC.,
`MERCEDES-BENZ USA, LLC, and FORD MOTOR COMPANY,1
`Petitioners,
`
`v.
`
`NEO WIRELESS, LLC,
`Patent Owner.
`
`
`IPR2022-01539
`Patent 10,965,512 B2
`
`
`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
`
`
`
`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.
`
`1
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`VOLKSWAGEN GROUP OF AMERICA, INC.,
`MERCEDES-BENZ USA, LLC, and FORD MOTOR COMPANY,1
`Petitioners,
`
`v.
`
`NEO WIRELESS, LLC,
`Patent Owner.
`
`
`IPR2022-01539
`Patent 10,965,512 B2
`
`
`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
`
`
`
`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.
`
`1
`
`
`
`STATEMENT OF RELIEF REQUESTED
`
`Pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.74, Petitioner Mercedes-
`
`Benz USA, LLC (“Mercedes”) and Patent Owner Neo Wireless LLC (“Neo”)
`
`jointly request termination of this proceeding with respect to Mercedes as a result
`
`of a Patent License and Settlement Agreement that resolves all pending disputes
`
`between Mercedes and Neo. Mercedes and Neo note that granting this motion will
`
`not result in termination of the proceeding in its entirety, because Petitioners
`
`Volkswagen Group of America, Inc. (“VW”) and Ford Motor Company (“Ford”)
`
`are not requesting termination. The Board authorized filing of this Joint Motion via
`
`email on July 28, 2023.
`
`Mercedes and Neo are further filing concurrently herewith a request that the
`
`Patent License and Settlement Agreement, filed herewith as Exhibit 2100, be kept
`
`confidential and separate from the file, pursuant to 35 U.S.C. § 317(b) and 37
`
`C.F.R. § 42.74(c). The Patent License and Settlement Agreement is being filed as
`
`“Available only to Board” in order to preserve confidentiality, including so that the
`
`other Petitioner (i.e., VW and Ford) does not have access to the agreement.
`
`STATEMENT OF FACTS
`
`On July 15, 2022, Neo asserted U.S. Patent No. 10,965,512 (the “’512
`
`Patent”) against Mercedes in an action entitled Neo Wireless LLC v. Mercedes-
`
`Benz USA, LLC, Case No. 3:22-cv-00780 (M.D. Fla.), which was conditionally
`
`2
`
`
`
`transferred to the Eastern District of Michigan for consolidated pretrial
`
`proceedings, as part of a multi-district litigation, in actions entitled In re Neo
`
`Wireless LLC Patent Litig., Case No. 2:22-md-03034 (E.D. Mich.) and Neo
`
`Wireless, LLC v. Mercedes-Benz USA, LLC, Case No. 2:22-cv-11769 (E.D. Mich.).
`
`The district court cases have since been dismissed with prejudice as to Mercedes,
`
`as part of the parties’ settlement. Mercedes filed its petition for inter partes review
`
`of the ’512 Patent on October 19, 2022, along with a motion to join IPR2022-
`
`01539 filed by VW. The Board granted institution of inter partes review and
`
`Mercedes’s motion for joinder on May 5, 2023. Similarly, Ford filed its petition for
`
`inter partes review of the ’512 Patent on March 28, 2023, along with a motion to
`
`join IPR2022-01539 filed by VW. The Board granted institution of inter partes
`
`review and Ford’s motion for joinder on July 17, 2023.
`
`A Patent License and Settlement Agreement has been reached which
`
`resolves all underlying disputes between Neo and Mercedes, including those
`
`related to this proceeding and the related district court proceedings involving the
`
`’512 Patent. A true and correct copy of the Patent License and Settlement
`
`Agreement is attached as Exhibit 2100.
`
`ARGUMENT
`
`Pursuant to 35 U.S.C. § 317(a), “[a]n inter partes review shall be terminated
`
`with respect to any petitioner upon the joint request of the petitioner and the patent
`
`3
`
`
`
`owner, unless the Office has decided the merits of the proceeding before the
`
`request for termination is filed.” See also 37 C.F.R. § 42.72 (“The Board may
`
`terminate a trial without rendering a final written decision, where appropriate,
`
`including where the trial is consolidated with another proceeding or pursuant to a
`
`joint request under 35 U.S.C. 317(a) or 327(a).”).
`
`As noted above, pursuant to 35 U.S.C. § 317(a)-(b), Mercedes and Neo
`
`request termination of this proceeding with respect to Mercedes and are filing
`
`herewith a confidential Patent License and Settlement Agreement as Exhibit 2100,
`
`which resolves all disputes between Mercedes and Neo. Mercedes and Neo certify
`
`that there are no other collateral agreements or understandings between them made
`
`in connection with, or in contemplation of, termination of this proceeding.
`
`Mercedes and Neo request that the Patent License and Settlement Agreement be
`
`kept separate from the file and treated as business confidential information, and are
`
`submitting herewith a Joint Motion to Keep Confidential And Separate Pursuant to
`
`35 U.S.C. § 317 and 37 C.F.R. § 42.74.
`
`Termination is appropriate as to Mercedes because the Board has not yet
`
`decided the merits of this inter partes review. Indeed, a Final Written Decision is
`
`not due until May 2, 2024, one year from institution. (Paper 7, Institution Decision
`
`dated May 2, 2023). And, as Mercedes has assumed an understudy role, its
`
`termination will not affect the proceeding going forward.
`
`4
`
`
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`Moreover, no other party’s rights would be prejudiced by the termination of
`
`this inter partes review as to Mercedes. Petitioners VW and Ford remains active in
`
`this proceeding. As Mercedes agreed to take an understudy role to VW, Mercedes
`
`being terminated from this proceeding will have no effect on the remaining parties.
`
`Accordingly, Mercedes and Neo respectfully request that the Board grant
`
`this Joint Motion to Terminate as to Mercedes.
`
`
`
`Dated: August 2, 2023
`
` Respectfully submitted,
`
`
`
`/s/ Kenneth J. Weatherwax
`Kenneth J. Weatherwax, Reg. No. 54,528
`Lowenstein & Weatherwax LLP
`
`Counsel for Patent Owner Neo Wireless, LLC
`
`
`/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
`
`Counsel for Petitioner
`Mercedes-Benz USA, LLC
`
`5
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that a copy of the following document was served
`via electronic service, by consent between the parties:
`
`JOINT MOTION TO KEEP CONFIDENTIAL AND SEPARATE
`
`PURSUANT TO 35 U.S.C. § 317 AND 37 C.F.R. § 42.74
`
`The names and address of the parties being served are as follows:
`
`Celine J. Crowson
`Joseph J. Raffeto
`
`Scott Hughes
`
`Helen Y. Trac
`
`Ryan C. Richardson
`Michael D. Specht
`Daniel E. Yonan
`
`David Haars
`
`
`
`
`
`
`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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`
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`The following document containing confidential business information of the
`
`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:
`
`
`EXHIBIT 2100
`
`
`
`
`
`
`
`
`The names and address of the parties being served are as follows:
`
`
`
`
`
`Celine J. Crowson
`Joseph J. Raffeto
`
`Scott Hughes
`
`Helen Y. Trac
`
`
`
`celine.crowson@hoganlovells.com
`joseph.raffeto@hoganlovells.com
`scott.hughes@hoganlovells.com
`helen.trac@hoganlovells.com
`
`Respectfully submitted,
`
` / William Katz /
`
`Date: August 2, 2023
`
`
`
`
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