Trials @uspto. gov
`571-272-7822
`
`Paper 13
`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.
`
`IPR2022-01539!
`Patent 10,965,512 B2
`
`Before HYUN J. JUNG, JO-ANNE M. KOKOSKTI,and
`MATTHEWS. 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
`
`' Mercedes-Benz USA, LLCfiled a motion for joinder anda petition in
`IPR2023-00079, and Ford Motor Companyfiled its own motion for jomder
`and petition in IPR2023-00764. Both motions weregranted, and,therefore,
`Mercedes-Benz USA, LLC and Ford Motor Companyhave beenjoined as
`petitionersin this proceeding.
`
`
`571-272-7822
`
`Paper 13
`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.
`
`IPR2022-01539!
`Patent 10,965,512 B2
`
`Before HYUN J. JUNG, JO-ANNE M. KOKOSKTI,and
`MATTHEWS. 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
`
`' Mercedes-Benz USA, LLCfiled a motion for joinder anda petition in
`IPR2023-00079, and Ford Motor Companyfiled its own motion for jomder
`and petition in IPR2023-00764. Both motions weregranted, and,therefore,
`Mercedes-Benz USA, LLC and Ford Motor Companyhave beenjoined as
`petitionersin this proceeding.
`
`
`
`IPR2022-01539
`Patent 10,965,512 B2
`
`I.
`
`INTRODUCTION
`
`Volkswagen Group of America, Inc. (“Volkswagen’’)filed a Petition
`
`seeking institution of an interpartes review of claims 1—30 of U.S. Patent
`
`No. 10,965,512 B2 (Ex. 1001, “the *512 patent”). Paper 1. After reviewing
`
`the Petition (Paper 1) and Patent Owner’s Preliminary Response (Paper6),
`
`weinstituted an interpartes review. Paper 7.
`
`Mercedes-Benz USA, LLC (“Mercedes-Benz’’), filed a petition anda
`
`jomder motion in IPR2023-00079, requesting that Mercedes-Benz be joined
`
`as a petitioner in IPR2022-01539. Mercedes-Benz USA, LLC v. Neo
`
`Wireless, LLC, IPR2023-00079, Paper 1 (petition), Paper 3 joinder motion).
`
`After considering the parties’ papers, we instituted trial in IPR2023-00079,
`
`granted Mercedes-Benz’s joinder motion, and joined Mercedes-Benz as a
`
`petitioner to IPR2022-01539. Mercedes-Benz USA, LLC v. Neo Wireless,
`
`LLC, IPR2023-00079, Paper 11 (Institution Decision). A copy of that
`
`decision is entered in IPR2022-01539. Paper9.
`
`On August 2, 2023, pursuantto our authorization, Mercedes-Benz and
`
`Neo Wireless, LLC (“Patent Owner’) filed a Joint Motion to Terminate with
`
`respect to Mercedes-Benz. Paper 17 (“Motion”or “Mot.’’). Mercedes-Benz
`
`and Patent Owneralsofiled a copy of a settlement agreement(Ex. 2100,
`
`“Settlement Agreement”), along with an authorized joint request to treat the
`
`Settlement Agreementas business confidential information and to keepit
`
`separate under 35 U.S.C. §317(b) and 37 C.F.R. § 42.74(c) (Paper 18).
`
`In the Motion, Mercedes-Benz and Patent Ownerstate that they have
`
`settled their dispute with respect to IPR2023-00079 and IPR2022-01539,
`
`and that the related district courtlitigation captioned Neo Wireless LLCv.
`
`Mercedes-Benz USA, LLC, Case No. 3:22-cv-00780 (M.D. Fla.), which was
`
`
`
`IPR2022-01539
`Patent 10,965,512 B2
`
`transferred to actions captioned In re Neo Wireless LLC PatentLitig., 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.), has been dismissed.
`
`Mot. 2-3.
`
`Theparties also submit that Confidential Exhibit 2100 is a true and
`
`correct copy of the Settlement Agreement (Mot. 3) and there are no
`
`collateral agreements made in connection with, or in contemplation of, the
`
`termination of the interpartes review (id. at 4).
`
`Il. DISCUSSION
`
`Under 35 U.S.C. § 317(a), “[a]n interpartes review instituted under
`
`this chapter shall be terminated with respect to any petitioner upon the joint
`
`requestof the petitioner and the patent owner, unless the Office has decided
`
`the merits of the proceeding before the request for terminationis filed.” Any
`
`agreementor understanding “made in connection with, or in contemplation
`
`of, the termination of an interpartes review” must be in writing, and a true
`
`copy of any such documents mustbefiled in the Office before termination.
`
`Id. § 317(b); accord 37 C.F.R. § 42.74(b).
`
`Because the moving parties (Mercedes-Benz and Patent Owner)
`
`represent that they have complied with the applicable requirements, we
`
`terminate the interpartes review with respect to Petitioner Mercedes-Benz.
`
`See 35 U.S.C. §317(a); 37 C.F.R. § 42.74.
`
`Volkswagen and Ford Motor Company, the remaining Petitioners in
`
`IPR2022-01539, are not parties to the Settlement Agreementand did not join
`
`the Motion. Accordingly, IPR2022-01539 remains pending as to
`
`Volkswagen and Ford Motor Company.
`
`
`
`IPR2022-01539
`Patent 10,965,512 B2
`
`The movingparties further request that “in the event a personor entity
`
`makesa written request, as stated in 37 C.F.R. § 42.74(c)(1)-(2), for access
`
`to the settlement agreement, that any such written request be served upon
`
`Mercedes[-Benz] and Neoonthe daythe written request is provided to the
`
`Board.” Paper 18,2. We have no such procedureto serve uponthe parties
`
`any written request for access to the Settlement Agreement, and, further, our
`
`regulations do not require us to doso. Therefore, we deny the moving
`
`parties’ request to be served with a written request for access to the
`
`Settlement Agreement.
`
`The movingparties further request that the Settlement Agreement“be
`
`kept separate from thefile of this proceeding andthe involved patent.”
`
`Paper 18, 2. After reviewing the Settlement Agreement, wefind that the
`
`Settlement Agreementcontains confidential business information regarding
`
`the terms of settlement. Therefore, we determinethat good causeexists to
`
`treat the Settlement Agreement (Ex. 2100) between the movingparties as
`
`business confidential information under 37 C.F.R. § 42.74(c), to keep it
`
`separate from the files of the involved patent and associated proceedings,
`
`and to limit its availability pursuant to 35 U.S.C. §317(b) and 37 C.F.R.
`
`§ 42.74(c).
`
`This Order does not constitute a final written decision pursuantto 35
`
`U.S.C. $ 318(a).
`
`Accordingly,it 1s:
`
`Ill. ORDER
`
`ORDEREDthatthe Joint Motion to Terminate with respectto
`
`Mercedes-Benzonly is granted in IPR2022-01539;
`
`
`
`IPR2022-01539
`Patent 10,965,512 B2
`
`FURTHER ORDEREDthatthe Settlement Agreement (Ex. 2100) be
`
`treated as business confidential information and shall remain designated as
`
`“Filing Party and Board”only in Board’s filing system, and shall be made
`
`available only to Federal Government agencies on written request, or to any
`
`person on a showing of good cause,and shall be kept separate from thefiles
`
`of the involved patent, pursuant to 35 U.S.C. § 317(b) and 37 C.F.R.
`
`§ 42.74(c);
`
`FURTHER ORDEREDthis paperdoesnotconstitute a final written
`
`decision pursuant to 35 U.S.C. § 318(a);
`
`FURTHER ORDEREDthatthe case caption for future submissionsin
`
`IPR2022-01539 shall not list Mercedes-Benzasa petitioner as set forth on
`
`the attached Exhibit;
`
`FURTHER ORDEREDthata copy of this Order be enteredinto the
`
`record of IPR2023-00079; and
`
`FURTHER ORDEREDthat IPR2023-00079 is terminated under
`
`37 C.F.R. § 42.72.
`
`
`
`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 LOVELLSUS LLP
`celine.crowson @hoganlovells.com
`joseph.raffeto @hoganlovells.com
`scott.hughes @hoganlovells.com
`helen.trac @hoganlovells.com
`
`For PETITIONER (VOLKSWAGEN GROUPOF 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 @stemekessler.com
`dhaars-PTAB @sternekessler.com
`PT AB @sternekessler.com
`
`For PETITIONER (FORD MOTORCOMPANY):
`
`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
`
`
`
`IPR2022-01539
`Patent 10,965,512 B2
`
`Hamad M. Hamad
`CALDWELL, CASSADY, & CURRY PC
`hhamad @caldwellec.com
`
`
`
`IPR2022-01539
`Patent 10,965,512 B2
`
`(Exhibit: Sample Case Caption)
`
`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.
`
`IPR2022-01539!
`Patent 10,965,512 B2
`
`' Ford Motor Companyfiled a motion for joinder andpetition in IPR2023-
`00764. The motion wasgranted, and, therefore, Ford Motor Companyhas
`been jomed aspetitioner in this proceeding.
`
`
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