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
`____________
`
`Patent No. 8,036,788
`Filing Date: August 9, 2007
`Issue Date: October 11, 2011
`Title: VEHICLE DIAGNOSTIC OR PROGNOSTIC MESSAGE
`TRANSMISSION SYSTEMS AND METHODS
`
`IPR2014-00629
`IPR2015-00176
`
`
`JOINT MOTION TO TERMINATE PROCEEDING AS TO PETITIONER
`AMERICAN HONDA MOTOR CO., INC. FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 8,036,788 PURSUANT TO 35 U.S.C. § 317
`
`
`
`
`
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`
`
`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`American Honda Motor Co., Inc.
`Hyundai Motor Company
`Petitioners
`
`v.
`
`American Vehicular Sciences LLC
`Patent Owner
`____________
`
`Patent No. 8,036,788
`Filing Date: August 9, 2007
`Issue Date: October 11, 2011
`Title: VEHICLE DIAGNOSTIC OR PROGNOSTIC MESSAGE
`TRANSMISSION SYSTEMS AND METHODS
`
`IPR2014-00629
`IPR2015-00176
`
`
`JOINT MOTION TO TERMINATE PROCEEDING AS TO PETITIONER
`AMERICAN HONDA MOTOR CO., INC. FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 8,036,788 PURSUANT TO 35 U.S.C. § 317
`
`
`
`
`
`
`
`
`
`
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`JOINT MOTION TO TERMINATE PROCEEDING
`IPR2014-00629
`IPR2015-00176
`
`Pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.74(a)-(b), Petitioner
`
`American Honda Motor Co., Inc. (“Honda”) and Patent Owner American Vehicular
`
`Sciences LLC (“AVS”) jointly request termination of the Inter Partes Review
`
`(IPR) of U.S. Patent No. 8,036,788, Case No. IPR2014-00629 as to Petitioner
`
`Honda. Honda and AVS are collectively referred to herein as “Parties” and
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`individually as a “Party.” The Parties agree that each Party bear its own fees and
`
`expenses.
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`Termination of this proceeding as to Honda is appropriate, as the Parties have
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`agreed to settle their dispute. Moreover, this review is in its early stages. Honda
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`filed its petition for inter partes review on April 15, 2014. AVS filed its
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`Preliminary Patent Owner Response on July 22, 2014. The review was instituted on
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`September 29, 2014. IPR2015-00176 filed by Hyundai Motor Company was joined
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`with this proceeding on November 25, 2014. No depositions have been taken. The
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`Patent Owner has not filed any substantive paper, and the Patent Owner has
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`submitted no declaration. Honda and AVS have agreed to settle their dispute and
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`have reached an agreement to terminate this review as to Honda. The Settlement
`
`Agreement with Honda has been made in writing and is filed separately as Exhibit
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`2001. The Settlement Agreement is being filed concurrently with a Joint Request
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`
`
`1
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`
`
`JOINT MOTION TO TERMINATE PROCEEDING
`IPR2014-00629
`IPR2015-00176
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`to Treat Agreement as Business Confidential Information Under 35 U.S.C. § 317
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`(b) and 37 C.F.R. § 42.74 (c). There are no collateral agreements referred to in the
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`Parties’ Settlement Agreement.
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`As stated in 35 U.S.C. § 317(a), because Honda and AVS request this
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`termination, it is understood that no estoppel under 35 U.S.C. § 315(e) shall attach
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`to Petitioner Honda. As provided in 37 C.F.R. § 42.73(d)(3), because no adverse
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`judgment has been entered, it is also understood that, as to Patent Owner AVS, no
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`estoppel under 37 C.F.R. § 42.73(d)(3) shall attach to AVS.
`
`On December 30, 2014, Honda and AVS advised the Board that they have
`
`reached a settlement, and sought authorization to file a joint motion to terminate the
`
`proceeding as to Honda. The Board held a conference call with the parties on
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`December 31, 2014. On January 8, 2015, the Board authorized the filing of a joint
`
`motion to terminate this proceeding as to Honda. Per the Board’s January 8, 2015
`
`Order, Honda and AVS understood that they were also to file separate papers
`
`requesting that the Settlement Agreement be treated as business confidential
`
`information as specified in 37 C.F.R. § 42.74(c) and that the Settlement Agreement
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`was to be filed in PRPS under the designation of “Board Only.”
`
`U.S. Patent No. 8,036,788 is being litigated in the following civil action, all
`
`
`
`2
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`
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`JOINT MOTION TO TERMINATE PROCEEDING
`IPR2014-00629
`IPR2015-00176
`
`claims of which will be dismissed with prejudice as a result of the Settlement
`
`Agreement:
`
`• American Vehicular Sciences LLC v. American Honda Motor Co., Inc.
`
`et al., 2:14-cv-13251 (E.D. Mich.), was transferred to the Eastern
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`District of Michigan in 2014, is in its early stages, and is currently
`
`stayed.
`
`U.S. Patent No. 8,036,788 is also being litigated in the following civil
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`actions, which remain pending:
`
`• American Vehicular Sciences LLC v. Hyundai Motor Co. et al., No.
`
`2:14-CV-13247 (E.D. Mich.), was transferred to the Eastern District of
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`Michigan in 2014, is in its early stages, and is currently stayed.
`
`• American Vehicular Sciences LLC v. Kia Motors America, Inc. et al.,
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`No. 2:14-CV-13249 (E.D. Mich.), was transferred to the Eastern
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`District of Michigan in 2014, is in its early stages, and is currently
`
`stayed.
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`• American Vehicular Sciences LLC v. Toyota Motor Corporation, No.
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`2:14-CV-13016 (E.D. Mich.), was transferred to the Eastern District of
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`Michigan in 2014, is in its early stages, and is currently stayed.
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`
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`3
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`JOINT MOTION TO TERMINATE PROCEEDING
`IPR2014-00629
`IPR2015-00176
`
`U.S. Patent No. 8,036,788 is also the subject of the following inter partes
`
`review proceeding:
`
`• IPR2013-00417, which was filed by Toyota Motor Corporation. A
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`final decision in that IPR was rendered on January 7, 2015.
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`No litigation or proceeding involving U.S. Patent No. 8,036,788 other than
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`that identified above is contemplated in the foreseeable future.
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`Wherefore, AVS and Honda respectfully request termination of the Inter
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`Partes Reviews of U.S. Patent No. 8,036,788, Case No. IPR2014-00629 as to
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`Petitioner Honda.
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`Dated: January 13, 2015
`
`
`
`Respectfully submitted,
`
`
`
`
`
`/Thomas J. Wimbiscus/
`Thomas J. Wimbiscus (Reg. No. 36,059)
`Scott P. McBride (Reg. No. 42,835)
`McANDREWS, HELD & MALLOY, LTD.
`500 West Madison St., 34th Floor
`Chicago, IL 60661
`Telephone: (312) 775-8000
`Attorney for Patent Owner
`American Vehicular Sciences LLC
`
`
`
`
`/Joseph Melnik/
`Joseph Melnik (Reg. No. 48,741)
`JONES DAY
`
`
`
`4
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`
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`JOINT MOTION TO TERMINATE PROCEEDING
`IPR2014-00629
`IPR2015-00176
`
`
`1755 Embarcadero Road
`Palo Alto, California 94303
`Telephone: (650) 739-3939
`Attorney for Petitioner
`American Honda Motor Co., Inc.
`
`
`
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`
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`5
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`
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`JOINT MOTION TO TERMINATE PROCEEDING
`IPR2014-00629
`IPR2015-00176
`
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`CERTIFICATE OF SERVICE
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`I hereby certify that Joint Motion to Terminate Proceeding was served on this
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`13th day of January, 2015 by electronic mail to the following:
`
`Lead Counsel for Honda
`Joseph Melnik (Reg. No. 48,741)
`(jmelnik@jonesday.com)
`JONES DAY
`1755 Embarcadero Road
`Palo Alto, CA 94303
`T: (650) 739-3939
`
`
`
`Lead Counsel for Hyundai
`Edward J. Naidich (Reg. No. 43,
`826)
`(ed.naidich@finnegan.com)
`Finnegan, Henderson, Farabow,
`Garrett, and Dunner, LLP
`901 New York Ave, NW
`Washington, DC 20001
`T: (202) 408-4000
`
`
`
`
`
`
`
`
`MCANDREWS HELD & MALLOY
`
`
`
`
`
`
`Telephone: 312-775-8000
`
`
`Facsimile: 312-775-8100
`
`
`
`CUSTOMER NUMBER: 23446
`
`Date: January 13, 2015
`
`Back-up Counsel for Honda
`Joseph M. Beauchamp (Reg. No. 46,544)
`(jbeauchamp@jonesday.com)
`H. Albert Liou (Reg. No. 71,504)
`(aliou@jonesday.com)
`JONES DAY
`717 Texas Ave., Suite 3300
`Houston, Texas 77002
`T: (832) 239-3939
`
`Back-up Counsel for Hyundai
`Christopher M. Kurpinski (Reg. No.
`68,339)
`(christopher.kurpinski@finnegan.com)
`Finnegan, Henderson, Farabow, Garrett,
`and Dunner, LLP
`901 New York Ave, NW
`Washington, DC 20001
`T: (202) 408-4000
`
`
`
`
`
`
`
`
`
`/Thomas J. Wimbiscus/
`Thomas J. Wimbiscus
`Registration No. 36,059
`
`
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`
`
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`6
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