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`571-272-7822
`Date Entered: November 17, 2014
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AMERICAN HONDA MOTOR CO., INC., TOYOTA MOTOR NORTH
`AMERICA, INC., NISSAN NORTH AMERICA INC., LLC, FORD MOTOR
`COMPANY, JAGUAR LAND ROVER NORTH AMERICA LLC, SUBARU OF
`AMERICA, INC., and VOLVO CARS OF NORTH AMERICA LLC,
`Petitioner,
`
`v.
`
`CRUISE CONTROL TECHNOLOGIES LLC,
`Patent Owner.
`____________
`
`Case IPR2014-00289
`Patent 6,324,463
`____________
`
`
`
`
`Before JOSIAH C. COCKS, HYUN J. JUNG, and GEORGE R. HOSKINS,
`Administrative Patent Judges.
`
`COCKS, Administrative Patent Judge.
`
`
`ORDER
`
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`Case IPR2014-00289
`Patent 6,324,463
`
`
`1. Introduction
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`
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`A conference call was held on November 12, 2014 concerning IPR2014-
`
`00289 between Judges Cocks, Jung, and Hoskins and counsel for the respective
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`parties. Also present on the call was counsel representing Petitioners in four
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`separate related inter partes review proceedings: IPR2014-00279; IPR2014-00280;
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`IPR2014-00281; and IPR2014-00291. The respective Petitioners for those
`
`proceedings are as follows:
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`
`
`
`
`
`
`
`
`
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`IPR2014-00279 – Subaru of America, Inc. et al. (“Subaru”);
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`IPR2014-00280 – Toyota Motor North America, Inc. et al. (“Toyota”);
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`IPR2014-00281 – Ford Motor Co. et al. (“Ford”); and
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`IPR2014-00291 – Nissan North America, Inc. et al. (“Nissan”).
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`Patent Owner and Petitioner entity American Honda Motor Co., Inc.
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`(“Honda”) requested the conference call seeking authorization to file a joint motion
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`to terminate Honda’s participation in the five related proceedings referenced
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`above.
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`2. Discussion
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`
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`During the call, counsel for Patent Owner explained that Petitioner entity
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`Honda and Patent Owner had settled their dispute involving U.S. Patent 6,324,463,
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`and no party on the call expressed any opposition to the request for authorization to
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`file a joint motion to terminate Honda’s participation in the following proceedings:
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`IPR2014-00279; IPR2014-00280; IPR2014-00281; IPR2014-00289; IPR2014-
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`00291. We authorized the motion.
`
`
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`Pursuant to 37 C.F.R. § 42.74, “[a]ny agreement or understanding between
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`the parties made in connection with, or in contemplation of, the termination of a
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`proceeding shall be made in writing and a true copy shall be filed with the Board
`
`
`
`2
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`
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`Case IPR2014-00289
`Patent 6,324,463
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`before termination of the trial.” A party to the settlement may also request that the
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`settlement be treated as business confidential information. The panel explained
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`that the parties may file any settlement agreement as an exhibit, which may be
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`designated as “Parties and Board Only” or “Board Only” in the Board’s electronic
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`Patent Review Processing System (“PRPS”).
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`
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`During the call, counsel Matthew Satchwell indicated that, with respect to
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`IPR2014-00289, he is currently designated as co-counsel, but would like to be
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`designated as lead counsel in that proceeding. The panel expressed that Mr.
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`Satchwell may do so by updating PRPS. Counsel should also file updated
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`Mandatory Notices that reflect the change in counsel information for any involved
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`proceeding.
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`3. Order
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`
`
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`It is
`ORDERED that Patent Owner and Petitioner entity Honda are authorized to
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`file a joint motion to terminate Honda’s participation in IPR2014-00289; and
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`
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`FURTHER ORDERED that a true copy of any associated settlement
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`agreement must be filed with the Board.
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`
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`3
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`Case IPR2014-00289
`Patent 6,324,463
`
`FOR PETITIONER:
`
`John M. Caracappa
`Tremayne M. Norris
`STEPTOE & JOHNSON LLP
`jcaracap@steptoe.com
`tnorris@steptoe.com
`
`
`William H. Mandir
`SUGHRUE MION PLLC
`wmandir@sughrue.com
`
`
`Matthew D. Satchwell
`DLA PIPER LLP (US)
`matthew.satchwell@dlapiper.com
`
`
`Wab Kadaba
`KILPATRICK TOWNSEND & STOCKTON LLP
`wkadaba@kilpatricktownsend.com
`
`
`Matthew J. Moore
`LATHAM & WATKINS LLP
`matthew.moore@lw.com
`
`FOR PATENT OWNER:
`
`John R. Kasha
`Kelly L. Kasha
`KASHA LAW LLC
`john.kasha@kashalaw.com
`kelly.kasha@kashalaw.com
`
`
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`4
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