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