BMW of North America, LLC1 (“Petitioner”) filed a Petition (Paper 2, “Pet.”) requesting inter partes review of claims 1, 2, 4–7, and 9–13 (“challenged claims”) of U.S. Patent No. 8,909,482 B2 (Ex. 1001, “the ’482 patent”).

Michigan Motor Technologies, LLC (“Patent Owner”) filed a Patent Owner Preliminary Response (Paper 11, “Prelim.

Along with the Institution Decision, we issued a Scheduling Order which, inter alia, set April 16, 2024 as the due date for submitting a Patent Owner’s Response.

On May 16, 2024—one week after the due date—we issued an Order to Show Cause requiring Patent Owner to “show cause why adverse judgment under 37 C.F.R. § 42.73(b)(4) should not be entered against it.” Paper 22, 2.

However, if the Board declines to exercise its discretion as requested, Patent Owner will not oppose adverse judgment under 37 C.F.R. § 42.73(b).” Paper 23, 2–3.

BMW of North America, LLC1 (“Petitioner”) filed a Petition (Paper 2, “Pet.”) requesting inter partes review of claims 1, 2, 4–7, and 9–13 (“challenged claims”) of U.S. Patent No 8,909,482 B2.

Patent Owner did not file a Response to the Petition2 by the May 9, 2024 due date set under the Scheduling Order as modified by the parties.

Accordingly, within ten (10) business days of the date of this Order, Patent Owner must show cause why adverse judgment under 37 C.F.R. § 42.73(b)(4) should not be entered against it.

Upon failure to respond or absent a showing of good cause, adverse judgment will be entered against Patent Owner as to the claims upon which trial was instituted.

Accordingly, it is ORDERED that adverse judgment shall be entered as to claims 1, 2, 4–7, and 9–13 of U.S. Patent No. 8,909,482 B2 unless, within ten (10) business days of the date of this Order, Patent Owner files a paper not exceeding ten (10) pages that demonstrates good cause why adverse judgment should not be entered.

On February 14, 2024, Petitioner filed motions requesting pro hac vice admission of Brian A. Biggs in each of the above-identified proceedings (collectively “Motions”).

Paper 14.3 Petitioner also submitted Declarations from Brian A. Biggs in support of the Motions (collectively “Declarations”).

In authorizing a motion for pro hac vice admission, the Board requires the moving party to provide a statement of facts showing there is good cause for the Board to recognize counsel pro hac vice and an affidavit or declaration of the individual seeking to appear in the proceeding.

Based on the facts set forth in the Motions and the accompanying Declarations, we conclude that Mr. Biggs has sufficient legal and technical qualifications to represent Petitioner in these proceedings, has demonstrated

Accordingly, Petitioner has established good cause for pro hac vice admission of Mr. Biggs.

“While the sequence of these questions might be reordered in any particular case,” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 407 (2007), the U.S. Court of Appeals for the Federal Circuit has repeatedly emphasized that “it is error to reach a conclusion of obviousness until all those factors are considered,” WBIP, LLC v. Kohler, 829 F.3d 1317, 1328 (Fed. Cir. 2016).

Although we give Dr. Bower’s testimony little weight, it is consistent with the invention disclosed in the ’482 patent, which claims using a computer to a calculate an ecological parameter based on power consumption and waste production data.

“NHK applies to the situation where the district court has set a trial date to occur earlier than the Board’s deadline to issue a final written decision in an instituted proceeding.” Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 3 (PTAB Mar. 20, 2020) (precedential) (Order).

Balancing the Fintiv Factors Based on our assessment of compelling merits as discussed in more detail below (see Section II.H, infra), we decline to exercise our discretion under § 314(a) to deny institution in view of the district court proceedings.

H. Compelling Merits Analysis “Compelling, meritorious challenges are those in which the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Interim Fintiv Guidance 4.

For example, reasonable expenses and attorneys’ fees incurred by any party may be levied on a person who impedes, delays, or frustrates the fair examination of a witness.

To satisfy this requirement, Patent Owner should request a conference call with the Board no later than two weeks prior to DUE DATE 1.

The Board defines a LEAP practitioner as a patent agent or attorney having three (3) or fewer substantive oral arguments in any federal tribunal, including PTAB.

All practitioners are expected to have a command of the factual record, the applicable law, and Board procedures, as well as the authority to commit the party they represent.

Patent 8,909,482 B2 NOTE: If Patent Owner files neither of the above papers (a reply to the opposition or a revised motion to amend), and the Board has issued preliminary guidance, Petitioner may file a reply to the preliminary guidance, no later than three (3) weeks after DUE DATE 3.

In the Joint Motions, Mercedes-Benz and Patent Owner represent that they have reached an agreement to jointly seek termination of the above captioned inter partes review proceedings as to Mercedes-Benz, and that the filed copies of the Settlement Agreement are true and correct copies.

Additionally, Mercedes-Benz and Patent Owner represent that “[t]here are no collateral agreements or understandings in connection with, or in contemplation of, the termination of th[ese] proceeding[s].” Id.

Mercedes-Benz and Patent Owner also filed Joint Requests that the Settlement Agreement be treated as business confidential information, including as to Petitioner BMW of North America, LLC, and be kept separate from the file of the patents involved in these inter partes proceedings.

We determine that good cause exists to treat the Settlement Agreement between Mercedes-Benz and Patent Owner as business confidential information pursuant to 37 C.F.R. § 42.74(c).

Accordingly, for the reasons discussed above, it is: ORDERED that the Joint Motions to Terminate as to Mercedes-Benz USA, LLC are granted, and each of IPR2023-01031, IPR2023-01032, IPR2023-01233, and IPR2023-01234 are terminated with respect to Mercedes-Benz USA, LLC; IPR2023-01031 (Patent 8,909,482 B2) IPR2023-01032 (Patent 6,581,565 B2) IPR2023-01233 (Patent 6,581,574 B1) IPR2023-01234 (Patent 6,588,260 B1) FURTHER ORDERED that BMW of North America, LLC will remain as Petitioner in each of these proceedings, and each of the above captioned cases will continue to proceed; FURTHER ORDERED that, in each of IPR2023-01031, IPR2023-01032, IPR2023-01233, and IPR2023-01234, the Joint Request to Maintain Confidentiality Pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74 is granted, and the Settlement Agreement shall remain designated as “Board only” in the Board’s filing system, 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 the files of Patent Nos. 8,909,482 B2, 6,581,565 B2, 6,581,574 B1, and 6,588,260 B1 pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c); and FURTHER ORDERED that, in each of these proceedings, the caption of the case is modified to eliminate the reference to “MERCEDES-BENZ USA, LLC” as set forth in the attached Exhibit which is an example for IPR2023-01031.

Mailed: August 22, 2023 Before Carrie Johnson, Trial Paralegal

The corrected petition filed on August 21, 2023, in the above proceeding is accepted.

The parties are reminded that unless otherwise permitted by 37 C.F.R. § 42.6(b)(2), all filings in this proceeding must be made electronically in the Patent Trial Appeal Case Tracking System (P-TACTS), accessible from the Board Web site at http://www.uspto.gov/PTAB.

To file documents, users

Patent 8,909,482 must first obtain a user ID by registering with MyUSPTO.