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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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`FORD MOTOR COMPANY.,
`Petitioner
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`v.
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`PAICE L.L.C. AND THE ABELL FOUNDATION, INC.,
`Patent Owner
`____________
`
`Case IPR2015-00606
`Patent 7,237,634
`____________
`
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`JOINT MOTION TO TERMINATE PROCEEDING UNDER 35 U.S.C. § 317
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`Joint Motion to Terminate Proceeding
`Case: IPR2015-00606
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`Exhibit Number
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`EXHIBITS
`Exhibit Name
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`Exhibit 2101
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`Exhibit 2102
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`Exhibit 2103
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`Exhibit 2104
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`Exhibit 2105
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`Exhibit 2106
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`Exhibit 2107
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`Exhibit 2108
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`Exhibit 2109
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`Exhibit 2110
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`Exhibit 2111
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`Exhibit 2112
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`Table of Ford’s IPR Petitions
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`Appendix A (Jan. 15, 2014)
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`Bosch Automotive Handbook, 1996 ed.
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`Declaration of Daniel A. Tishman in Support of Patent
`Owners’ Motion for Pro Hac Vice Admission
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`Declaration of Neil Hannemann
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`Neil Hannemann CV
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`ZVEI, Voltage Classes for Electric Mobility (December
`2013)
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`Gregory W. Davis Deposition Tr. (IPR2015-00758)
`(January 13, 2016)
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`5-17-2016 Deposition Transcript of Jeffrey Stein Ph.D.
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`Patent Owner’s Demonstrative Exhibit
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`Patent Settlement Agreement
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`Patent License Agreement
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`
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`i
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`
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`Joint Motion to Terminate Proceeding
`Case: IPR2015-00606
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`
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`Pursuant to 35 U.S.C. § 317(a), the Petitioner, Ford Motor Company, and
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`Patent Owners Paice L.L.C. and the Abell Foundation, Inc. (collectively, “Parties”)
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`hereby jointly move for an order terminating the inter partes review, as a result of
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`a confidential settlement between the Parties. The Parties’ settlement has been
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`made in writing, and copies of the same are being filed concurrently herewith as
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`Exhibits. There are no other agreements relating to the proceeding.
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`The IPR Proceeding relates to a petition for Inter Partes Review filed
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`January 28, 2015, directed to U.S. Patent No. 7,237,634 (the “’634 Patent”), and
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`assigned Proceeding Number IPR2015-00606. The Board entered a final written
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`decision on November 8, 2016, which the Federal Circuit affirmed in part, vacated
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`in part, and remanded on February 1, 2018.
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`In addition, the Parties desire that their settlement documentation be
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`maintained as business confidential information under 37 C.F.R. § 42.74(c), and a
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`separate joint request to that effect is being filed concurrently herewith.
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`1. Reasons Why Termination Is Appropriate.
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`Termination is proper under 35 U.S.C. § 317(a) because the Parties are
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`jointly requesting termination, and the Office has not yet on remand “decided the
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`merits of the proceeding before the request for termination is filed.” Here, the
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`Federal Circuit vacated a portion of the Board’s final determination. On remand,
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`the Board has yet to issue a final written decision, much less to consider new
`1
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`evidence and briefing, prior to reaching a final written decision in this matter. For
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`Joint Motion to Terminate Proceeding
`Case: IPR2015-00606
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`
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`example, if remand were to proceed, Patent Owner intends to request the
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`opportunity to submit additional briefing and evidence in view of the Federal
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`Circuit’s ruling—a request that Petitioner does not oppose.
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`As noted in the Patent Office Trial Practice Guidelines, “there are strong
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`public policy reasons to favor settlement between the parties to a proceeding . . . .
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`The 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. 35
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`U.S.C. § 317(a), as amended, and 35 U.S.C. § 327.”1 Accordingly, termination is
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`appropriate here.
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`2.
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`Status of Related Cases/Proceedings.
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`The litigations styled Paice LLC et al. v. Ford Motor Co., No. 1:14-cv-492
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`(D. Md.) and Certain Hybrid Electric Vehicles and Components Thereof, Inv. No.
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`337-TA-1042 have been dismissed as a result of the settlement between the parties.
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`1 See Federal Register Vol. 77, No. 157 at 48768.
`2
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`3.
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`Conclusion
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`Joint Motion to Terminate Proceeding
`Case: IPR2015-00606
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`
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`For the foregoing reasons, the Parties jointly request termination of
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`IPR2015-00606.
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`Date: August 28, 2018
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`Date: August 28, 2018
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`Respectfully submitted,
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`/Frank Angileri/
`Frank Angileri, Reg. No. 36,733, for
`Petitioner, Ford Motor Company.
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`/Brian J. Livedalen/
`Brian J. Livedalen, Reg. No. 67,450, for
`Patent Owners, Paice L.L.C. and the
`Abell Foundation, Inc.
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`3
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`Joint Motion to Terminate Proceeding
`Case: IPR2014-00606
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR § 42.6(e)(1), the undersigned certifies that on August
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`28, a complete and entire copy of Joint Motion to Terminate Proceeding Under
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`35 U.S.C. § 317, and its exhibits, were provided via email, to Petitioner by serving
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`the email correspondence addresses of record as follows:
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`Frank A. Angileri
`Sangeeta G. Shah
`Michael D. Cushion
`Michael N. MacCallum
`Brooks Kushman P.C.
`1000 Town Center
`Twenty-Second Floor
`Southfield, Michigan 48075
`Email: FPGP0104IPR2@brookskushman.com
`
`Lissi Mojica
`Kevin Greenleaf
`Dentons US LLP
`233 South Wacker Drive, Suite 7800
`Chicago, IL 60606-6306
`Email: lissi.mojica@dentons.com
`Email: kevin.greenleaf@dentons.com
`Email: ipt.docketchi@dentons.com
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`/Edward G. Faeth/
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`Edward G. Faeth
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`(202) 626-6420
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