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Trials@uspto.gov
`571.272.7822
`
`
`
`
`
` Paper No. 14
`Entered: January 8, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`AMERICAN HONDA MOTOR CO., INC.,
`HYUNDAI MOTOR COMPANY,
`Petitioners,
`
`v.
`
`AMERICAN VEHICULAR SCIENCES LLC,
`Patent Owner.
`____________
`
`Case IPR2014-00629
`Case IPR2015-00176
`Patent 8,036,788 B2
`____________
`
`
`
`Before BARBARA A. PARVIS and
`GREGG I. ANDERSON, Administrative Patent Judges.
`
`ANDERSON, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`

`
`IPR2014-00629 and IPR2015-00176
`Patent 8,036,788
`
`
`On December 31, 2014, a telephone conference call was held between
`Joseph Melnik and Albert Liou, counsel for American Honda Motor Co., Inc.
`(“Honda”); Scott McBride and Stephanie Samz, counsel for American Vehicular
`Sciences LLC (“AVS”); and Judges Parvis and Anderson. Honda and AVS sought
`authorization to file a motion to terminate this proceeding as to Honda, on the basis
`that Honda and AVS have settled. Hyundai Motor Company will remain as the
`sole Petitioner. 1
`Generally, the Board expects that a proceeding will terminate as to a
`petitioner who has settled after the filing of a settlement agreement. See, e.g.,
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14, 2012).
`The rule governing settlement indicates that any agreement between the parties
`made in connection with, or in contemplation of, the termination of a proceeding
`shall be in writing and filed with the Board. 37 C.F.R. § 42.74.
`During the conference call, the Honda and AVS sought authorization to file
`a joint motion to terminate the proceeding as to Honda. In addition, AVS and
`Honda sought guidance as to the procedure for filing their settlement agreement
`and to have the settlement agreement be treated as business confidential
`information under 37 C.F.R. § 42.74(c).
`The Board indicated that filing of a joint motion to terminate this proceeding
`as to Honda is authorized. The joint motion should include: (1) a brief
`explanation as to why termination is appropriate; (2) the identity of all parties in
`any related district court case involving the patents at issue in the proceedings
`sought to be terminated as to Honda; (3) the identity of any related proceedings
`currently before the Office; and (4) the current status of each such related case or
`
`
`1 Ed Naidich and Christopher Kurpinski were on the call for Hyundai Motor
`Company.
`
`

`
`IPR2014-00629 and IPR2015-00176
`Patent 8,036,788
`
`proceeding with respect to each party to the case or proceeding. See Heartland
`Tanning, Inc. v. Sunless, Inc., IPR2014-00018, slip. op. at 2 (PTAB July 28, 2014)
`(Paper 26). The joint motion must specifically discuss the current status of the
`related litigation, Am. Vehicular Sciences. LLC v. American Honda Motor Co.,
`Inc., No. 6:13-cv-00226 (E.D. Tex.), with respect to each party to that litigation.
`The joint motion to terminate as to Honda must be accompanied by a true copy of
`the fully executed settlement agreement as required by 35 U.S.C. § 317(b) and
`37 C.F.R. § 42.74(b). A redacted version of the settlement agreement is not a true
`copy of the settlement agreement.
`With respect to having the settlement agreement treated as business
`confidential information under 37 C.F.R. § 42.74(c), the Board noted that the
`parties must file the confidential settlement agreement electronically via the Patent
`Review Processing System (PRPS). With Honda’s agreement, AVS should file the
`settlement agreement in PRPS as “Board Only” so that, once filed, no party may
`view the settlement agreement. At the time of filing, AVS will serve Honda with a
`copy of the settlement agreement as filed.
`Upon termination of this case as to Honda, this case will continue as to
`Hyundai Motor Company as the sole Petitioner. Our Order of Joinder November
`25, 2014 (IPR2015-00176, Paper 12) is hereby amended to reflect that Hyundai is
`no longer subject to the restraints in the Order of Joinder related to consolidated
`filings.
`Accordingly, it is:
`ORDERED that Honda and AVS are authorized to file a joint motion to
`terminate this proceeding as to Honda on the basis that the parties have settled;
`FURTHER ORDERED that the joint motion is due January 15, 2015;
`FURTHER ORDERED that the joint motion must be accompanied by a
`
`

`
`IPR2014-00629 and IPR2015-00176
`Patent 8,036,788
`
`true copy, labeled as an exhibit, of the settlement agreement as required by
`35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b);
`FURTHER ORDERED that the parties may file a separate joint motion
`requesting that the settlement agreement be treated as business confidential
`information as specified by 37 C.F.R. § 42.74(c) as per the agreement between
`Honda and AVS;
`FURTHER ORDERED that any confidential settlement agreement must be
`filed electronically via PRPS as “Board Only;” and
`FURTHER ORDERED that Order of Joinder November 25, 2014 (Paper
`12) is hereby amended to reflect that Hyundai is no longer subject to the restraints
`in the Order of Joinder related to consolidated filings.
`
`
`
`
`
`
`
`

`
`IPR2014-00629 and IPR2015-00176
`Patent 8,036,788
`
`For PETITIONER in IPR2014-00629:
`
`Joseph Melnik
`Joseph M. Beauchamp
`H. Albert Liou
`JONES DAY
`jmelnik@jonesday.com
`jbeauchamp@jonesday.com
`aliou@jonesday.com
`
`For PETITIONER in IPR2015-00176:
`
`Edward Naidich
`Christopher Kurpinski
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER,
`Ed.Naidich@finnegan.com
`Christopher.Kurpinski@finnegan.com
`
`
`
`
`
`For PATENT OWNER:
`
`Scott P. McBride
`Thomas J. Wimbiscus
`Stephanie F. Samz
`MCANDREWS HELD & MALLOY, LTD.
`smcbride@mcandrews-ip.com
`twimbiscus@mcandrews-ip.com
`ssamz@mcandrews-ip.com

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