Trials@uspto.gov
`571-272-7822
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` Paper 21
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`Entered: August 15, 2023
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`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,
`Petitioner,
`
`v.
`
`NEO WIRELESS, LLC,
`Patent Owner.
`____________
`
`IPR2022-015391
`Patent 10,965,512 B2
`____________
`
`Before HYUN J. JUNG, JO-ANNE M. KOKOSKI, and
`MATTHEW S. MEYERS, Administrative Patent Judges.
`
`JUNG, Administrative Patent Judge.
`
`
`
`ORDER
`Settlement as to Mercedes-Benz USA, LLC
`35 U.S.C. § 317; 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.
`
`
`
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`571-272-7822
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` Paper 21
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`
`Entered: August 15, 2023
`
`
`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,
`Petitioner,
`
`v.
`
`NEO WIRELESS, LLC,
`Patent Owner.
`____________
`
`IPR2022-015391
`Patent 10,965,512 B2
`____________
`
`Before HYUN J. JUNG, JO-ANNE M. KOKOSKI, and
`MATTHEW S. MEYERS, Administrative Patent Judges.
`
`JUNG, Administrative Patent Judge.
`
`
`
`ORDER
`Settlement as to Mercedes-Benz USA, LLC
`35 U.S.C. § 317; 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.
`
`
`
`
`
`IPR2022-01539
`Patent 10,965,512 B2
`
`I.
`
`INTRODUCTION
`
`Volkswagen Group of America, Inc. (“Volkswagen”) filed a Petition
`
`seeking institution of an inter partes review of claims 1–30 of U.S. Patent
`
`No. 10,965,512 B2 (Ex. 1001, “the ’512 patent”). Paper 1. After reviewing
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`the Petition (Paper 1) and Patent Owner’s Preliminary Response (Paper 6),
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`we instituted an inter partes review. Paper 7.
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`Mercedes-Benz USA, LLC (“Mercedes-Benz”), filed a petition and a
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`joinder motion in IPR2023-00079, requesting that Mercedes-Benz be joined
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`as a petitioner in IPR2022-01539. Mercedes-Benz USA, LLC v. Neo
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`Wireless, LLC, IPR2023-00079, Paper 1 (petition), Paper 3 (joinder motion).
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`After considering the parties’ papers, we instituted trial in IPR2023-00079,
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`granted Mercedes-Benz’s joinder motion, and joined Mercedes-Benz as a
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`petitioner to IPR2022-01539. Mercedes-Benz USA, LLC v. Neo Wireless,
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`LLC, IPR2023-00079, Paper 11 (Institution Decision). A copy of that
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`decision is entered in IPR2022-01539. Paper 9.
`
`On August 2, 2023, pursuant to our authorization, Mercedes-Benz and
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`Neo Wireless, LLC (“Patent Owner”) filed a Joint Motion to Terminate with
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`respect to Mercedes-Benz. Paper 17 (“Motion” or “Mot.”). Mercedes-Benz
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`and Patent Owner also filed a copy of a settlement agreement (Ex. 2100,
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`“Settlement Agreement”), along with an authorized joint request to treat the
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`Settlement Agreement as business confidential information and to keep it
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`separate under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) (Paper 18).
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`In the Motion, Mercedes-Benz and Patent Owner state that they have
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`settled their dispute with respect to IPR2023-00079 and IPR2022-01539,
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`and that the related district court litigation captioned Neo Wireless LLC v.
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`Mercedes-Benz USA, LLC, Case No. 3:22-cv-00780 (M.D. Fla.), which was
`
`
`
`
`
`IPR2022-01539
`Patent 10,965,512 B2
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`transferred to actions captioned In re Neo Wireless LLC Patent Litig., Case
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`No. 2:22-md-03034 (E.D. Mich.) and Neo Wireless, LLC v. Mercedes-Benz
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`USA, LLC, Case No. 2:22-cv-11769 (E.D. Mich.), has been dismissed.
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`Mot. 2–3.
`
`The parties also submit that Confidential Exhibit 2100 is a true and
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`correct copy of the Settlement Agreement (Mot. 3) and there are no
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`collateral agreements made in connection with, or in contemplation of, the
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`termination of the inter partes review (id. at 4).
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`II. DISCUSSION
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`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
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`the merits of the proceeding before the request for termination is filed.” Any
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`agreement or understanding “made in connection with, or in contemplation
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`of, the termination of an inter partes review” must be in writing, and a true
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`copy of any such documents must be filed in the Office before termination.
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`Id. § 317(b); accord 37 C.F.R. § 42.74(b).
`
`Because the moving parties (Mercedes-Benz and Patent Owner)
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`represent that they have complied with the applicable requirements, we
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`terminate the inter partes review with respect to Petitioner Mercedes-Benz.
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`See 35 U.S.C. § 317(a); 37 C.F.R. § 42.74.
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`Volkswagen and Ford Motor Company, the remaining Petitioners in
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`IPR2022-01539, are not parties to the Settlement Agreement and did not join
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`the Motion. Accordingly, IPR2022-01539 remains pending as to
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`Volkswagen and Ford Motor Company.
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`
`
`
`
`IPR2022-01539
`Patent 10,965,512 B2
`
`The moving parties further request that “in the event a person or entity
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`makes a written request, as stated in 37 C.F.R. § 42.74(c)(1)–(2), for access
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`to the settlement agreement, that any such written request be served upon
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`Mercedes[-Benz] and Neo on the day the written request is provided to the
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`Board.” Paper 18, 2. We have no such procedure to serve upon the parties
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`any written request for access to the Settlement Agreement, and, further, our
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`regulations do not require us to do so. Therefore, we deny the moving
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`parties’ request to be served with a written request for access to the
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`Settlement Agreement.
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`The moving parties further request that the Settlement Agreement “be
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`kept separate from the file of this proceeding and the involved patent.”
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`Paper 18, 2. After reviewing the Settlement Agreement, we find that the
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`Settlement Agreement contains confidential business information regarding
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`the terms of settlement. Therefore, we determine that good cause exists to
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`treat the Settlement Agreement (Ex. 2100) between the moving parties as
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`business confidential information under 37 C.F.R. § 42.74(c), to keep it
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`separate from the files of the involved patent and associated proceedings,
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`and to limit its availability pursuant to 35 U.S.C. § 317(b) and 37 C.F.R.
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`§ 42.74(c).
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`This Order does not constitute a final written decision pursuant to 35
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`U.S.C. § 318(a).
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`Accordingly, it is:
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`III. ORDER
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`ORDERED that the Joint Motion to Terminate with respect to
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`Mercedes-Benz only is granted in IPR2022-01539;
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`
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`IPR2022-01539
`Patent 10,965,512 B2
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`FURTHER ORDERED that the Settlement Agreement (Ex. 2100) be
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`treated as business confidential information and shall remain designated as
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`“Filing Party and Board” only in Board’s filing system, and shall be made
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`available only to Federal Government agencies on written request, or to any
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`person on a showing of good cause, and shall be kept separate from the files
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`of the involved patent, pursuant to 35 U.S.C. § 317(b) and 37 C.F.R.
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`§ 42.74(c);
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`FURTHER ORDERED this paper does not constitute a final written
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`decision pursuant to 35 U.S.C. § 318(a);
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`FURTHER ORDERED that the case caption for future submissions in
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`IPR2022-01539 shall not list Mercedes-Benz as a petitioner as set forth on
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`the attached Exhibit;
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`FURTHER ORDERED that a copy of this Order be entered into the
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`record of IPR2023-00079; and
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`FURTHER ORDERED that IPR2023-00079 is terminated under
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`37 C.F.R. § 42.72.
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`
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`
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`IPR2022-01539
`Patent 10,965,512 B2
`
`For PETITIONER (MERCEDES-BENZ USA, LLC):
`
`Celine J. Crowson
`Joseph J. Raffeto
`Scott Hughes
`Helen Y. Trac
`HOGAN LOVELLS US LLP
`celine.crowson@hoganlovells.com
`joseph.raffeto@hoganlovells.com
`scott.hughes@hoganlovells.com
`helen.trac@hoganlovells.com
`
`For PETITIONER (VOLKSWAGEN GROUP OF AMERICA, INC.):
`
`Ryan C. Richardson
`Michael D. Specht
`Daniel E. Yonan
`David W. Haars
`STERNE, KESSLER, GOLDSTEIN & FOX PLLC
`rrichardson-PTAB@sternekessler.com
`mspecht-PTAB@sternekessler.com
`dyonan-PTAB@sternekessler.com
`dhaars-PTAB@sternekessler.com
`PTAB@sternekessler.com
`
`For PETITIONER (FORD MOTOR COMPANY):
`
`John S. LeRoy
`Christopher Smith
`LATHAM & WATKINS LLP
`jleroy@brookskushman.com
`csmith@brookskushman.com
`
`FOR PATENT OWNER:
`
`Kenneth J. Weatherwax
`Parham Hendifar
`LOWENSTEIN & WEATHERWAX LLP
`weatherwax@lowensteinweatherwax.com
`hendifar@lowensteinweatherwax.com
`
`
`
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`
`
`IPR2022-01539
`Patent 10,965,512 B2
`
`Hamad M. Hamad
`CALDWELL, CASSADY, & CURRY PC
`hhamad@caldwellcc.com
`
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`IPR2022-01539
`Patent 10,965,512 B2
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`(Exhibit: Sample Case Caption)
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`VOLKSWAGEN GROUP OF AMERICA, INC. and
`FORD MOTOR COMPANY,
`Petitioner,
`
`v.
`
`NEO WIRELESS, LLC,
`Patent Owner.
`____________
`
`IPR2022-015391
`Patent 10,965,512 B2
`____________
`
`
`
`1 Ford Motor Company filed a motion for joinder and petition in IPR2023-
`00764. The motion was granted, and, therefore, Ford Motor Company has
`been joined as petitioner in this proceeding.
`
`
`
`
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