Neo Wireless, LLC v. Mercedes-Benz USA, LLC

I'll research this case to provide a well-grounded overview. Let me start with searches on the parties, the MDL, and the patent at issue.

Let me dig into the specific patent, the IPR proceedings, and the dismissal.

Let me verify the '512 patent's actual title and claims, plus the dismissal details.

I'll research this case across multiple sources. Let me start with broad searches.

Let me dig into the motion to dismiss ruling, the IPR proceedings, and any claim construction.

Let me get the Mercedes docket details, the answer/counterclaims, and the MDL's ruling on the motions to dismiss.

Key Legal Developments — Neo Wireless, LLC v. Mercedes-Benz USA, LLC, No. 2:22-cv-11769-TGB (E.D. Mich.)

Bottom line: This was a short-lived member case of MDL No. 3034. It never reached Markman, summary judgment, or trial. MBUSA obtained a with-prejudice dismissal in June 2023 after a confidential patent license/settlement, and its parallel IPR on the '512 patent was terminated by the PTAB in August 2023. No appeal, no fee award, no merits ruling.

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1. Filing & Initial Pleadings

• 2022-07-15 — Complaint filed. Neo Wireless sued Mercedes-Benz USA, LLC in the U.S. District Court for the Middle District of Florida, Case No. 3:22-cv-00780-MMH-JBT (Jacksonville Div.; Judge Marcia Morales Howard, Mag. J. Joel B. Toomey). Neo asserted six patents, not just the '512:
  • U.S. 8,467,366 ('366); 10,833,908 ('908); 10,075,941 ('941); 10,447,450 ('450); 10,965,512 ('512); and 10,771,302 ('302).
  • Specific claims were attached as exhibits (Ex. 11 = claim 15 of the '512; Ex. 7 = claim 1 of the '366; Ex. 8 = claim 11 of the '908; Ex. 9 = claim 13 of the '941; Ex. 10 = claim 7 of the '450; Ex. 12 = claim 23 of the '302). Jury demand. Neo identified its parent as CFIP NCF Holdings LLC. Plaintiff's counsel: Howard L. Wernow (FL), plus Jason D. Cassady/Christopher S. Stewart of Caldwell Cassady & Curry P.C. (dockets.justia.com, case 2:2022cv11769; Caldwell Cassady case page).
  • This was part of a coordinated campaign filed the same day against Tesla, GM, Ford, Honda, Nissan, VW, and FCA/Stellantis across seven districts.
• 2022-07-19/20 — Service on MBUSA (Return of Service, Dkt. 8 in the FL case).
• 2022-08-01 — JPML Conditional Transfer Order (CTO-1) transferring the case into In re Neo Wireless, LLC Patent Litigation, MDL No. 3034 (E.D. Mich., Judge Terrence G. Berg). MDL centralization had been sought by Neo.
• 2022-08-02 — Docketed in E.D. Mich. as 2:22-cv-11769-TGB (transferee case no.; MDL master docket 2:22-md-03034-TGB). Pending motions had to be refiled in E.D. Mich.
• 2022-09-12 — MBUSA's Rule 12(b)(6) Motion to Dismiss (Dkt. 74). It targeted only the willful-infringement and indirect/induced-infringement theories — MBUSA argued Neo failed to plausibly plead (i) pre-suit knowledge of the asserted patents, (ii) pre-suit knowledge of infringement, or (iii) the requisite intent, and that Neo could not rely on the complaint itself to supply notice. MBUSA expressly incorporated co-defendants Honda, Nissan, and VW's briefing per the court's "coordinate to avoid duplicative briefing" instruction (Dkt. 27).
• 2022-09-23 — Rule 26(f) joint discovery plan filed (Dkt. 5) — an early MDL-wide discovery framework.
• 2022-09-29 — MBUSA's partial Answer to the complaint (cited in later Neo filings).
• 2022-10-03 — Neo's opposition (Dkt. 87): Neo argued it had pleaded pre-suit notice, culpable conduct, and intent, and requested leave to amend in the alternative.
• 2022-10-17 — MBUSA's reply (Dkt. 93), reiterating that the parent/subsidiary "knowledge" allegation was inadequate and that amendment would be futile.
• Counterclaims: I could not locate a publicly reported set of MBUSA counterclaims (invalidity/non-infringement) in the sources reviewed. The eventual Rule 41(a)(2) dismissal order, however, disposed of "all claims and counterclaims currently and previously pled," which suggests some pleadings of that nature existed (PatSnap/PACER summary). Treat the counterclaim detail as not well-sourced.

2. Pre-Trial Motions of Substance

• Motion to dismiss (Rule 12(b)(6)) — the only substantive MBUSA motion in this member case. There is no public record that Judge Berg ever ruled on it. The case settled and was dismissed in June 2023 while the motion (and Neo's alternative leave-to-amend request) remained outstanding. Effectively it was mooted by settlement.
• No motion to transfer by MBUSA (the case was transferred by the JPML, not on a party motion).
• No stay motion by MBUSA. The MDL-wide motion to stay pending IPR was filed by the other defendants (VW, Ford, Honda, etc.) in May 2023 (Dkt. 145), and MBUSA was expressly not a party to that motion because it was then in settlement discussions (Dkt. 149 n.1). The court ultimately denied the stay (opinion published at VitalLaw, In re Neo Wireless, LLC Patent Litig.), noting fact discovery was complete or near complete, a Markman order had issued, expert reports were due to begin 2024-03-11, and two defendants had already settled (MBUSA on 2023-06-06; VW on 2024-01-11). That ruling came after MBUSA had already exited the case.
• No summary judgment motion by MBUSA. The MDL-wide defense MSJ (non-infringement, no pre-suit damages under 35 U.S.C. § 287(a), no willfulness) was filed by Honda and other remaining defendants in 2024 (E.D. Mich. ECF 265-1 opposition 2024-07-18; reply ECF 283, 2024-08-06) — long after MBUSA's dismissal.

3. Claim Construction (Markman)

• The MDL conducted claim construction on a consolidated basis, with a joint claim construction statement filed 2023-01-18 (Dkt. 114) and Neo's opening brief on 2023-02-16 (Ex. 1041 in IPR2022-01539). VW and Neo filed a stipulation on 2023-01-25 in which VW agreed to be bound by Judge Berg's constructions and waived appeal as to the six patents — a notable coordination between the district-court and PTAB tracks.
• The Markman hearing was held 2023-06-21 — after MBUSA had already begun its settlement track, so MBUSA did not participate in the hearing.
• 2023-11-20 — Claim Construction Memorandum and Order (ECF 198), construing fourteen terms across the asserted patents. Key rulings relevant to the '512 family of cases included constructions of "random access signal" and "probing signal" as requiring a "direct sequence spread spectrum" (DSSS) signal, and the '941 "mobile specific transmission parameter" limitation (requiring capability of indicating both distributed and localized subcarriers). The court also found "low peak-to-average power ratio in the time domain" in the '366 patent indefinite.
• 2024 — Motion for reconsideration of the indefiniteness determination denied (ECF 218, Op. & Order Denying Reconsideration, ECF No. 201).
• Significance for MBUSA: none directly — it had been dismissed six

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Let me verify the specific appearances on the E.D. Mich. docket and the roles of each attorney.

I'll research the docket and counsel appearances for this case.

Good leads. Let me verify the counsel list and look for the earlier M.D. Fla. appearances and pro hac vice filings.