Trials@uspto.gov
`571-272-7822
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`Paper No. __
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`TRW AUTOMOTIVE U.S. LLC
`Petitioner
`v.
`MAGNA ELECTRONICS, INC.
`Patent Owner
`____________
`
`Case IPR2015-004361
`Patent 8,599,001
`____________
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`
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`JOINT MOTION TO TERMINATE PROCEEDING
`PURSUANT TO 35 U.S.C. § 317 and 37 C.F.R. § 42.74
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`AND
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`JOINT REQUEST THAT SETTLEMENT & LICENSE AGREEMENT BE
`TREATED AS BUSINESS CONFIDENTIAL INFORMATION PURSUANT
`TO 35 U.S.C. § 317 and 37 C.F.R. § 42.74
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`1Cases IPR2015-00437, IPR2015-00438, and IPR2015-00439 have been
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`consolidated with this proceeding.
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`571-272-7822
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`Paper No. __
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TRW AUTOMOTIVE U.S. LLC
`Petitioner
`v.
`MAGNA ELECTRONICS, INC.
`Patent Owner
`____________
`
`Case IPR2015-004361
`Patent 8,599,001
`____________
`
`
`
`JOINT MOTION TO TERMINATE PROCEEDING
`PURSUANT TO 35 U.S.C. § 317 and 37 C.F.R. § 42.74
`
`AND
`
`JOINT REQUEST THAT SETTLEMENT & LICENSE AGREEMENT BE
`TREATED AS BUSINESS CONFIDENTIAL INFORMATION PURSUANT
`TO 35 U.S.C. § 317 and 37 C.F.R. § 42.74
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`1Cases IPR2015-00437, IPR2015-00438, and IPR2015-00439 have been
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`consolidated with this proceeding.
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`Pursuant to 35 U.S.C. § 317 and 37 C.F.R. § 42.72, Petitioner TRW
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`Automotive U.S. LLC (“TRW”) and Patent Owner Magna Electronics, Inc.
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`(“Magna”) (collectively, the “Parties”) jointly request termination of Inter Partes
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`Review Cases IPR2015-00436, IPR2015-00437, IPR2015-00438, and IPR2015-
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`00439.
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`The IPR cases currently pending between the Parties are listed below in
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`Table 1.
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`Table 1: Pending IPRs between the Parties
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`
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`Trial Number
`IPR2015-01693
`IPR2015-01692
`IPR2015-01685
`IPR2015-01013
`IPR2015-01012
`IPR2015-00961
`IPR2015-00960
`IPR2015-00950
`IPR2015-00949
`IPR2015-00923
`IPR2015-00439
`IPR2015-00438
`IPR2015-00437
`IPR2015-00436
`IPR2014-01499
`IPR2014-01497
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`Filing Date Patent
`8/8/2015
`8749367
`8/8/2015
`8749367
`8/7/2015
`8710969
`4/7/2015
`8686840
`4/7/2015
`8686840
`3/27/2015
`8116929
`3/27/2015
`8116929
`3/27/2015
`8636393
`3/27/2015
`8629768
`3/24/2015
`8686840
`12/19/2014 8599001
`12/19/2014 8599001
`12/19/2014 8599001
`12/19/2014 8599001
`9/12/2014
`8531279
`9/12/2014
`8531278
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`1
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`On February 10, 2016, the Parties e-mailed the Board to request the Board’s
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`authorization to file joint motions to terminate the IPR Proceedings listed in Table
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`1. The Parties also sought the Board’s authorization to file with the motions to
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`terminate the IPRs requests to treat the written Settlement & License Agreement as
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`business confidential information. The Board, in an e-mail dated February 10,
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`2016, authorized the Parties to file a motion to terminate and a request to treat the
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`written Settlement & License Agreement as business confidential information in
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`Cases IPR2015-00436, IPR2015-00437, IPR2015-00438, and IPR2015-00439.
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`TRW filed its Petitions in Cases IPR2015-00436, IPR2015-00437, IPR2015-
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`00438, and IPR2015-00439 on December 19, 2014. These Petitions challenged
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`certain claims of Magna Patent No. 8,599,001. The Board, in its Institution
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`Decision dated July 10, 2015, consolidated Cases IPR2015-00437, IPR2015-
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`00438, and IPR2015-00439 with Case IPR2015-00436. (IPR2015-00436, Paper
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`10, p. 44). Trial was instituted as to claims 1–15, 24, 28, 32, 34–40, 42–50, 53–66,
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`69, 71, 73–79, 81–85, 87–100, and 102–08 of the ’001 Patent. Id., at p. 43. Magna
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`filed its Patent Owner Response (Paper 19) on October 13, 2015, and TRW filed
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`its Reply (Paper 28) on January 19, 2016. The Request for Oral Argument was due
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`on February 12, 2016 (Paper 30, p. 1), and Oral Argument, if requested, would
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`have been scheduled for March 10, 2016 (Paper 11, p. 6).
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`The Parties have settled all of their disputes involving the ’001 Patent, as
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`well as other patents owned by Magna which cover or relate to forward facing
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`camera systems. Pursuant to 37 C.F.R. § 42.74(b), the Parties’ Settlement &
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`License Agreement has been made in writing, and a true and correct copy is filed
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`2
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`herewith as Exhibit 1072. The Settlement & License Agreement requires the
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`Parties to cooperate to request that the Board terminate all pending TRW IPRs.
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`The Settlement & License Agreement also calls for the dismissal of all pending
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`lawsuits between the Parties that relate to the Magna Patents identified above in
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`Table 1, particularly:
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`• Magna Electronics Inc. v. TRW Automotive Holdings Corp., et al.,
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`No. 1:12-cv-00654 (W.D. Mich.).
`• Magna Electronics Inc. v. TRW Automotive Holdings Corp., et al.,
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`No. 1:13-cv-00324 (W.D. Mich.).
`• Magna Electronics Inc. v. TRW Automotive Holdings Corp., et al.,
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`No 1:13-cv-01364 (W.D. Mich.).
`• Magna Electronics Inc. v. TRW Automotive Holdings Corp., et al.,
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`No. 1:14-cv-00341 (W.D. Mich.).
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`The Trial Practice Guide notes that “[t]here are strong public policy reasons
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`to favor settlement between the parties to a proceeding.” (77 Fed. Reg. 48756,
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`48768 (August 14, 2012)). The Trial Practice Guide further provides that “[t]he
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`Board expects that a proceeding will terminate after the filing of a settlement
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`agreement, unless the Board has already decided the merits of the proceeding [, see
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`] 35 U.S.C. 317(a), as amended, and 35 U.S.C. 327.” Id. The Parties thus request
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`termination of Cases IPR2015-00436, IPR2015-00437, IPR2015-00438, and
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`IPR2015-00439 with respect to both Magna and TRW. The Parties also request
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`that the Settlement & License Agreement (Ex. 1072) be treated as business
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`confidential information under 35 U.S.C. § 317(b). Because Magna and TRW
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`request this termination as to TRW, no estoppel under 35 U.S.C. § 315(e) shall
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`3
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`
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`attach to TRW under 35 U.S.C. § 317(a).
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`*
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`*
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`*
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`Respectfully Submitted,
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`By:
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`By:
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`/s/ Jason D. Eisenberg
`
`/s/ Timothy K. Sendek
`
`Timothy K. Sendek, Reg. No. 64,542
`LATHROP & GAGE LLP
`155 N. Upper Wacker Dr. #3050
`Chicago, IL 60606
`(312) 920-3319
`
`Counsel for Petitioner
`TRW Automotive U.S. LLC
`
`Jason D. Eisenberg, Reg. 43,447
`STERNE, KESSLER, GOLDSTEIN & FOX
`P.L.L.C.
`1100 NEW YORK AVENUE, NW
`WASHINGTON, D.C. 20005
`(202) 371-8645
`Counsel for Patent Owner
`Magna Electronics Inc.
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`
`
`Date: February 15, 2016
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`4
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`
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`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that a copy of the foregoing JOINT
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`
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`MOTION TO TERMINATE PROCEEDING PURSUANT TO 35 U.S.C. § 317
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`and JOINT REQUEST THAT SETTLEMENT RELATED AGREEMENTS BE
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`TREATED AS BUSINESS CONFIDENTIAL INFORMATION PURSUANT TO
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`35 U.S.C. § 317 and 37 C.F.R. § 42.74 and Exhibit 1072 were served on Patent
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`Owner on February 15, 2016 via email to the attorneys of record at the following
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`addresses:
`
`Davidc-PTAB@skgf.com
`jasone-PTAB@skgf.com
`Flory@glbf.com
`linn@glbf.com
`
`David K.S. Cornwell
`Jason Eisenberg
`Sterne, Kessler, Goldstein & Fox PLLC
`1100 New York Avenue NW
`Washington, D.C. 20005
`
`
`Timothy A. Flory
`Terence J. Linn
`Van Dyke, Gardner, Linn & Burkhart, LLP
`2851 Charlevoix Drive, S.E., Suite 207
`Grand Rapids Michigan 49546
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`/s/ Timothy K. Sendek
`Timothy K. Sendek, Reg. No. 64,542
`LATHROP & GAGE LLP
`155 N. Upper Wacker Dr. #3050
`Chicago, IL 60606
`(312) 920-3319
`Tsendek@lathropgage.com
`
`1
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