Paper 18
`Entered: April 2, 2016
`
`Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`AMERICAN HONDA MOTOR CO., INC., NISSAN NORTH AMERICA,
`INC., and KIA MOTORS AMERICA, INC.,
`Petitioner,
`
`v.
`
`SIGNAL IP, INC.,
`Patent Owner.
`_______________
`
`Case IPR2015-010041
`Patent 6,012,007
`_______________
`
`
`
`Before MEREDITH C. PETRAVICK, JEREMY M. PLENZLER, and
`JAMES A. TARTAL, Administrative Patent Judges.
`
`
`PLENZLER, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`1 Nissan North America, Inc. and Kia Motors America, Inc. were joined as
`parties to this proceeding via Motions for Joinder in IPR2016-00113 and
`IPR2016-00115, respectively.
`
`
`Entered: April 2, 2016
`
`Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`AMERICAN HONDA MOTOR CO., INC., NISSAN NORTH AMERICA,
`INC., and KIA MOTORS AMERICA, INC.,
`Petitioner,
`
`v.
`
`SIGNAL IP, INC.,
`Patent Owner.
`_______________
`
`Case IPR2015-010041
`Patent 6,012,007
`_______________
`
`
`
`Before MEREDITH C. PETRAVICK, JEREMY M. PLENZLER, and
`JAMES A. TARTAL, Administrative Patent Judges.
`
`
`PLENZLER, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`1 Nissan North America, Inc. and Kia Motors America, Inc. were joined as
`parties to this proceeding via Motions for Joinder in IPR2016-00113 and
`IPR2016-00115, respectively.
`
`
`
`IPR2015-01004
`Patent 6,012,007
`
`
`A conference call was held on Tuesday, March 29, 2016, to discuss
`the effect, on Petitioners Nissan North America, Inc. (“Nissan”) and Kia
`Motors America, Inc. (“Kia”), of a settlement reached between Petitioner
`American Honda Motor Co., Inc. (“Honda”) and Patent Owner in the
`underlying district court litigation. Counsel for Honda, Nissan, Kia, and
`Patent Owner, and Judges Petravick and Plenzler participated on the call.
`All parties agreed to a collective filing of the Petitioner’s Reply by
`Nissan and Kia, and Nissan and Kia indicated that Kia would file the
`Petitioner’s Reply. Accordingly, we authorized Nissan and Kia to
`collectively file the Petitioner’s Reply in place of Honda.
`During the call, Honda additionally requested authorization to file
`what was initially characterized as a joint motion to have it terminated as a
`Petitioner in this proceeding, but which it later characterized as a motion to
`dismiss it as a Petitioner in this proceeding. Honda indicated that it had
`settled its dispute in the underlying district court proceeding by obtaining a
`sub-license from a third party (i.e., a party that had obtained a license from
`Patent Owner). Accordingly, Honda indicated that there was no settlement
`agreement between Patent Owner and Honda to file, as required by 35
`U.S.C. § 317(b).
`Honda and Patent Owner are authorized to file a joint motion to
`terminate. See 35 U.S.C. § 317(a). The joint motion shall explain the
`circumstances of the dismissal of Honda from the underlying district court
`litigation. The parties are reminded that any agreement or understanding
`between Patent Owner and Honda, including any collateral agreements
`referred to in such agreement or understanding, made in connection with, or
`in contemplation of, the termination of the proceeding shall be in writing,
`
`2
`
`
`
`IPR2015-01004
`Patent 6,012,007
`
`and a true copy of that agreement or understanding shall be filed in the
`Office. 35 U.S.C. § 317(b). If no agreement exists between Honda and
`Patent Owner, as Honda represented during the call, in order to ensure
`compliance with 35 U.S.C. § 317(b) based on the facts of this proceeding,
`the parties are required to certify in writing that there are no other written or
`oral agreements or understandings, including any collateral agreements,
`between them, including, but not limited to, licenses, covenants not to sue,
`confidentiality agreements, payment agreements, or other agreements of any
`kind, that are made in connection with, or in contemplation of, the
`termination of the instant proceeding. With respect to the sub-license
`obtained by Honda, if Honda files a motion to terminate that does not
`include the filing of that sub-license agreement, the motion should explain
`the circumstances of the sub-license agreement, including the nature of the
`relationship between the grantor of the sub-license and Honda (i.e., whether
`there is any form of corporate relationship between the parties, such as
`parent-subsidiary) and why that agreement cannot and/or should not be filed
`in this proceeding. Any agreement filed to satisfy § 317(b) may be filed as
`“Board Only” in order to maintain the confidentiality of such an agreement
`and avoid the details of the agreement being disclosed to Petitioners Nissan
`and Kia.
`In the event Honda and Patent Owner do not file a joint motion to
`terminate and, instead, believe that Honda should be dismissed as a
`Petitioner in this proceeding, as Honda appeared to suggest on the call,
`Honda is authorized to file a request for authorization to file a motion,
`limited to three pages, explaining the basis for such a motion to have it
`dismissed, including why termination would not be appropriate and how the
`
`3
`
`
`
`IPR2015-01004
`Patent 6,012,007
`
`circumstances of the proposed dismissal would affect the requirements of
`§ 317(b) (i.e., an explanation as to why there would be no agreement to file
`with the Board).
`
`It is
`ORDERED that Petitioners Nissan and Kia are authorized to file a
`coordinated Petitioner’s Reply in place of Petitioner Honda filing the
`Petitioner’s Reply;
`FURTHER ORDERED that Petitioner Honda and Patent Owner are
`authorized to file a joint motion to terminate as outlined above by no later
`than April 8, 2016; and
`FURTHER ORDERED that in place of such a joint motion to
`terminate, Petitioner Honda may file a 3 page request for authorization to
`file a motion to have it dismissed from this proceeding, by no later than
`April 8, 2016, explaining the basis for a motion to have it dismissed as a
`petitioner in this proceeding, including why termination would not be
`appropriate and how the circumstances of the proposed dismissal would
`affect the requirements of § 317(b).
`
`4
`
`
`
`
`
`IPR2015-01004
`Patent 6,012,007
`
`PETITIONER:
`Joshua A. Griswold
`Daniel Smith
`griswold@fr.com
`ipr15625-0020ip1@fr.com
`
`PATENT OWNER:
`Tarek N. Fahmi
`Holly J. Atkinson
`tarek.fahmi@ascendalaw.com
`holly.atkinson@ascendalaw.com
`patents@ascendalaw.com
`
`5
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