`571-272-7822
`
` Date: January 16, 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 JAMESON LEE, BARBARA A. PARVIS, and
`GREGG I. ANDERSON, Administrative Patent Judges.
`
`ANDERSON, Administrative Patent Judge.
`
`
`
`1
`
`ORDER
`Termination of Proceeding
`as to American Honda Motor Co., Inc.
`35 U.S.C. § 317(a) and 37 C.F.R. § 42.74
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2014-00629 and IPR2015-00176
`Patent 8,036,788
`On January 13, 2015, a joint motion to terminate this inter partes review
`with respect to Petitioner American Honda Motor Co., Inc. (“Honda”) was filed by
`Honda and Patent Owner, American Vehicular Sciences LLC (“AVS”). Paper 15.
`Also, on January 13, 2015, Honda and AVS filed a copy of their written settlement
`agreement covering Patent 8,036,788 involved in this inter partes review (Ex.
`2001). Honda and AVS also filed a joint request to have their settlement
`agreement treated as confidential business information under 35 U.S.C. § 317(b)
`and 37 C.F.R. § 42.74(c). Paper 16. Honda and AVS represent that the settlement
`agreement filed as Exhibit 2001 is a true and accurate copy of their settlement
`agreement. Paper 15.
`
`Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under this
`chapter shall be terminated with respect to any petitioner upon the joint request of
`the petitioner and patent owner, unless the Office has decided the merits of the
`proceeding before the request for termination is filed.” The requirement for
`terminating review with respect to Honda is met.
`On October 28, 2014, Hyundai Motor Company (“Hyundai”) filed a Petition
`for inter partes review of U.S. Patent No. 8,036,788 B2. IPR2015-00176, Paper 1.
`Also on October 28, 2014, Hyundai filed a Motion for Joinder to join IPR2015-
`00176 with this proceeding. IPR2015-00176, Paper 3. On November 25, 2014,
`we granted Hyundai’s Motion for Joinder. IPR2015-00176, Paper 12.
`These proceedings, therefore, will continue with Petitioner, Hyundai, and
`Patent Owner, AVS. In our decision on Hyundai’s Motion for Joinder, we ordered
`that Honda and Hyundai file papers as consolidated filings and restricted papers
`that Hyundai could file separately. Id. The requirement for consolidated filings
`and any restrictions on Hyundai in our decision on Hyundai’s Motion for Joinder
`(IPR2015-00176, Paper 12) are no longer applicable in light of our termination
`from Honda from these proceedings.
`
`
`
`IPR2014-00629 and IPR2015-00176
`Patent 8,036,788
`
`
`It is
`ORDERED that the joint motion to terminate IPR2014-00629 is granted,
`
`and this inter partes review is hereby terminated as to American Honda Motor Co.,
`Inc. (“Honda”) as the Petitioner;
`
`FURTHER ORDERED that the Honda and AVS’s joint request (Paper 16)
`to have their settlement agreement (Exhibit 2001) treated as business confidential
`information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) is also granted; and
`FURTHER ORDERED that the requirement that Honda and Hyundai Motor
`Company (“Hyundai”) file papers as consolidated filings and cooperate to
`designate attorneys to conduct cross-examinations of any witnesses produced by
`AVS and the redirect of any witnesses produced by Honda or Hyundai, as well as
`restrictions placed on filings by Hyundai separate from Honda, which were set
`forth in our Decision on Hyundai’s Motion for Joinder (IPR2015-00176, Paper 12)
`hereby no longer apply and Hyundai is sole Petitioner in IPR2014-00629.
`
`
`
`
`
`IPR2014-00629 and IPR2015-00176
`Patent 8,036,788
`For PETITIONER HONDA:
`Joseph Melnik
`Joseph M. Beauchamp
`H. Albert Liou
`JONES DAY
`jmelnik@jonesday.com
`jbeauchamp@jonesday.com
`aliou@jonesday.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
`
`
`
`
`
`For PETITIONER HYUNDAI:
`
`Edward Naidich
`Christopher Kurpinski
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER,
`Ed.Naidich@finnegan.com
`Christopher.Kurpinski@finnegan.com
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