`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`VOLKSWAGEN GROUP OF AMERICA, INC.
`Petitioner,
`v.
`ROTHSCHILD LOCATION TECHNOLOGIES, LLC
`Patent Owner.
`______________
`Case IPR2015-00793
`Patent 7,917,285
`______________
`
`JOINT MOTION TO TERMINATE INTER PARTES REVIEW
`
`1
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`Pursuant to 35 U.S.C. § 317(a), Petitioner and Patent Owner jointly request
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`termination of this inter partes review, which is directed at U.S. Patent No.
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`7,917,285.
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`
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`Termination of this review is appropriate because the parties have resolved
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`their dispute and have reached an agreement to, among other things, terminate this
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`review. Ex. 1017, Settlement and License Agreement (submitted as business
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`confidential information pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c)).
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`The petition for review was filed on February 25, 2015. The Board has not entered
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`a decision regarding institution. “Generally, the Board expects that a proceeding
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`will terminate after the filing of a settlement agreement.” Oracle Corp. v. Cmty.
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`United IP, LLC, CBM2013-00015, Paper 13 (July 25, 2013) (citing Office Patent
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`Trial Practice Guide, 77 Fed. Reg. 48756, 48765–66 (Aug. 14, 2012)).
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`
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`A true copy of the parties’ written settlement agreement is being filed as an
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`exhibit contemporaneously with this joint motion to terminate. The settlement
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`agreement has been filed for access by the “Parties and Board Only.” The parties
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`desire that the settlement agreement be maintained as business confidential
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`information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), and a separate
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`joint request for such is being filed contemporaneously.
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`
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`The filing of this joint motion was authorized by the Board by email on July
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`6, 2015. Regarding the Board’s request, in its July 6, 2015 email, for an
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`2
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`explanation of the status of any litigation involving the underlying patent, the
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`Board is advised by the parties that the litigation between them, i.e., Rothschild
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`Location Technologies, LLC v. Volkswagen Group of America, Inc., No. 1:14-cv-
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`01129 (D. Del.), has been dismissed.
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`
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`The Board is further advised by the Patent Owner of the status of the
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`following litigation involving the underlying patent:
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`Case Name
`
`Rothschild Location Technologies LLC v.
`Glympse Inc.
`Rothschild Location Technologies LLC v.
`Lyft, Inc.
`Rothschild Location Technologies LLC v.
`Motorola Solutions, Inc.
`Rothschild Location Technologies LLC v.
`American Honda Motor Company Inc.
`Rothschild Location Technologies, LLC v.
`Hyundai Motor America
`Rothschild Location Technologies, LLC v.
`Calamp, Corp.
`
`Court
`
`E.D. Tex.
`
`E.D. Tex.
`
`E.D. Tex.
`
`D. Del.
`
`D. Del.
`
`D. Del.
`
`Case
`Number
`6-15-cv-
`00260
`6-15-cv-
`00261
`6-15-cv-
`00244
`1-14-cv-
`01351
`1-14-cv-
`01128
`1-14-cv-
`00632
`
`Status
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`Live
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`Live
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`Live
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`Live
`(Settled)
`Live
`(Settled)
`Live
`(Settled)
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`
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`
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`Respectfully Submitted,
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`
`
`
`
`By: /Clifford A. Ulrich/
`Michael J. Lennon
`(Reg. No. 26,562; mlennon@kenyon.com)
`Clifford A. Ulrich
`(Reg. No. 42,194; culrich@kenyon.com)
`Kenyon & Kenyon LLP
`One Broadway
`New York, NY 10004
`3
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`Dated: July 14, 2015
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`Tel: 212.425.7200
`Fax: 212.425.5288
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`
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`By: /s/
`
`
`Neal G. Massand
`Neal G. Massand (Reg. No. 54,296)
`Hao Ni (Reg. No. 53,859
`Ni, Wang & Massand, PLLC
`8140 Walnut Hill Ln., Suite 310
`Dallas, TX 75231
`Phone: 972-331-4601
`Fax: 972-314-0900
`nmassand@nilawfirm.com
`
`4
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`CERTIFICATE OF SERVICE
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`The foregoing Joint Motion to Terminate Inter Partes Review was served on
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`July 14, 2015, via electronic mail upon the following:
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`Michael J. Lennon (Reg. No. 26,562; mlennon@kenyon.com) Lead Counsel
`Clifford A. Ulrich (Reg. No. 42,194; culrich@kenyon.com) Backup Counsel
`Kenyon & Kenyon LLP
`One Broadway
`New York, NY 10004
`Tel: 212.425.7200
`Fax: 212.425.5288
`
`Neal G. Massand
`nmassand@nilawfirm.com
`Ni, Wang & Massand, PLLC
`8140 Walnut Hill Ln., Suite 310
`Dallas, TX 75231
`
`
`
`
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`
`
`
`
`/Clifford A. Ulrich /
`Clifford A. Ulrich, Backup Counsel for Petitioner
`Reg. No. 42,194
`
`5
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