UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
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`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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` AMERICAN HONDA MOTOR CO., INC.,
`Petitioner
`
`v.
`
`SIGNAL IP, INC.,
`Patent Owner
`____________
`
`
`
`
`
` Case IPR2015-010041
`Patent 6,012,007
`____________
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`
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`PETITIONER’S MOTION TO TERMINATE PROCEEDING
`PURSUANT TO 35 U.S.C. §317
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`
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`1 Nissan North America, Inc. and Kia Motors America, Inc. were joined as parties
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`to this proceeding via Motions for Joinder in IPR2016-00113 and IPR2016-00115,
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`respectively.
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`
`
`
`
`
`
`____________
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
` AMERICAN HONDA MOTOR CO., INC.,
`Petitioner
`
`v.
`
`SIGNAL IP, INC.,
`Patent Owner
`____________
`
`
`
`
`
` Case IPR2015-010041
`Patent 6,012,007
`____________
`
`
`
`PETITIONER’S MOTION TO TERMINATE PROCEEDING
`PURSUANT TO 35 U.S.C. §317
`
`
`
`
`
`
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`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.
`
`
`
`
`
`
`
`Proceeding No.: IPR2015-01004
`Attorney Docket No. 15625-0020IP1
`
`EXHIBITS
`
`Honda-1001
`
`U.S. Patent No. 6,012,007 to Fortune et al. (“the ’007 Patent”)
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`Honda-1002
`
`Excerpts from the Prosecution History of the ’007 Patent (“the
`Prosecution History”)
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`Honda-1003
`
`Declaration of Dr. Kirsten M. Carr re the ’007 Patent
`
`Honda-1004
`
`U.S. Patent No. 5,474,327 (“Schousek”)
`
`Honda-1005
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`U.S. Patent No. 5,232,243 (“Blackburn”)
`
`Honda-1006
`
`Joint Claim Construction Brief , Signal IP v. American Honda
`Motor Co., et al., Case 2:14-cv-02454-JAK-JEM, Document 46
`(Joint Claim Construction Brief)
`
`Honda-1007
`
`Email from Holly Atkinson confirming agreement to terminate
`
`Honda-1008
`
`Joint Motion to Dismiss and Court Order, Signal IP v.
`American Honda Motor Co., et al., Case 2:14-cv-02454-JAK-
`JEM, filed March 23, 2016.
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`
`
`
`
`i
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`
`
`Proceeding No.: IPR2015-01004
`Attorney Docket No. 15625-0020IP1
`
`
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`Pursuant to 35 U.S.C. § 317(a), Petitioner American Honda Motor Co., Inc.
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`(“Honda”) requests termination of this inter partes review of United States Patent
`
`No. 6,012,007, Case No. IPR2015-01004, as to Petitioner Honda only.
`
`The Board authorized the filing of the instant Motion in an Order dated April
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`2, 2016 (Paper 19).
`
`Termination with respect to Petitioner Honda is proper under 35 U.S.C. §
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`317(a), because the parties are jointly requesting termination and the Office has not
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`yet “decided the merits of the proceeding before the request for termination is
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`filed.” Further, Petitioner and Patent Owner have entered into a written agreement
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`memorializing the prior oral agreement to jointly request termination of this inter
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`partes review as to Petitioner Honda. A true and correct copy is being filed
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`herewith as Exhibit 1007, pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b).
`
`Pursuant to 35 U.S.C. § 317(a), no estoppel shall attach to American Honda Motor
`
`Co., Inc. or its privies.
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`The litigation between the parties, Signal IP, Inc. v. American Honda Motor
`
`Co., Inc. et al., Case No. 2-14-cv-02454, in the U.S. District Court for the Central
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`District of California, was dismissed on March 23, 2016. As indicated during the
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`March 28, 2016 conference between the Board and the parties, a Honda entity has
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`obtained a license to the ‘007 patent from a third party. The third party is neither a
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`
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`1
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`
`
`Proceeding No.: IPR2015-01004
`Attorney Docket No. 15625-0020IP1
`parent nor subsidiary of, and has no other corporate interrelationship to, Petitioner
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`Honda, Patent Owner Signal IP or any of Petitioner’s or Patent Owner’s related
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`entities. Additionally, Petitioner Honda and its related corporate entities are not a
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`party to the agreement between Patent Owner and the third party. Thus, neither
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`agreement represents an “agreement or understanding between the patent owner
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`and a petitioner,” as recited in 35 U.S.C. § 317(b), or an “agreement or
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`understanding between the parties,” as recited in 37 C.F.R. §42.74(b). Therefore,
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`neither agreement should be filed. To satisfy § 317 the parties have memorialized
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`their informal oral agreement regarding jointly terminating this inter partes review
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`in the agreement filed as Exhibit 1007. There are no other agreements or
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`understandings between Patent Owner and Petitioner, including any collateral
`
`agreements referred to in such agreement or understanding, made in connection
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`with, or in contemplation of, the termination of this inter partes review. The Joint
`
`Motion to Dismiss filed in the District Court and the Court’s corresponding order
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`are also being provided as Exhibit 1008.
`
`Aside from this inter partes review proceeding, the ’007 Patent is also the
`
`subject of the following proceeding(s) currently before the Office:
`
`Proceeding
`IPR2015-01116
`
`IPR2016-00113
`
`Requestor/Petitioner
`Volkswagen Group of
`America, Inc.
`Nissan North America,
`Inc.
`
`Status
`Not instituted
`
`Instituted; joined with the
`present review
`
`
`
`2
`
`
`
`Proceeding No.: IPR2015-01004
`Attorney Docket No. 15625-0020IP1
`Kia Motors America, Inc.
`Instituted; joined with the
`present review
`Pending
`
`Toyota Motor
`Corporation
`Aisin Seiki Co., Ltd.
`
`Pending
`
`IPR2016-00115
`
`IPR2016-00292
`
`IPR2016-00366
`
`
`As mentioned above, this request to terminate is only as to IPR2015-01004
`
`and only as to Petitioner Honda.
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`The ‘007 patent has been asserted in the following litigations:
`
`Proceeding
`Signal IP, Inc. v. Kia Motors America, Inc., Case No.
`2:14-cv-02457 (C.D. Cal.)
`Signal IP, Inc. v. Mazda Motor of America, Inc., Case
`No. 8:14-cv-00491 (C.D. Cal.)
`Signal IP, Inc. v. Nissan North America, Inc., Case
`No. 2:14-cv-02962 (C.D. Cal.)
`Signal IP, Inc. v.Fiat U.S.A., Inc. et al., Case No. 2:
`14-cv-13864 (E.D. Mich., formerly C.D. Cal. Case
`No. 2:14-cv-03105)
`Signal IP, Inc. v. American Honda Motor Co., Inc. et
`al., Case No. 2:14-cv-02454 (C.D. Cal.)
`Signal IP, Inc. v. BMW of North America, LLC et al.,
`Case No. 2:14-cv-03111 (C.D. Cal.)
`Signal IP, Inc. v. Ford Motor Company, Case No.
`2:14-cv-13729 (E.D. Mich., formerly C.D. Cal. Case
`No. 2:14-cv-03106)
`Signal IP, Inc. v. Hyundai Motor America, Case No.
`8:15-cv-01085 (C.D. Cal.)
`Signal IP, Inc. v. Hyundai Motor America, Case No.
`2:15-cv-05166 (C.D. Cal.)
`Signal IP, Inc. v. Jaguar Land Rover North America,
`LLC, Case No. 2:14-cv-03108 (C.D. Cal.)
`Signal IP, Inc. v. Mazda Motor of America, Inc., Case
`No. 2:14-cv-02459 (C.D. Cal.)
`
`Status
`Active
`
`Active
`
`Active
`
`Active
`
`Concluded
`
`Concluded
`
`Concluded
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`Concluded
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`Concluded
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`Concluded
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`Concluded
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`3
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`
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`Proceeding No.: IPR2015-01004
`Attorney Docket No. 15625-0020IP1
`Concluded
`
`Signal IP, Inc. v. Mercedes-Benz USA, LLC et al.,
`Case No. 2-14-cv- 03109 (C.D. Cal.)
`Signal IP, Inc. v. Mitsubishi Motors North America,
`Inc., Case No. 2:14-cv-02462 (C.D. Cal.)
`Signal IP, Inc. v. Mitsubishi Motors North America,
`Inc., Case No. 8:14-cv-00497 (C.D. Cal.)
`Signal IP, Inc. v. Porsche Cars North America, Inc.,
`Case No. 2:14-cv-03114 (C.D. Cal.)
`Signal IP, Inc. v. Subaru of America, Inc., Case No.
`2:14-cv-02963 (C.D. Cal.)
`Signal IP, Inc. v. Suzuki Motor of America, Inc., Case
`No. 8:14-cv-00607 (C.D. Cal.)
`Signal IP, Inc. v. Toyota Motor North America, Inc.
`et al., No. 2:15-cv-05162 (C.D. Cal.)
`Signal IP, Inc. v. Volkswagen Group of America, Inc.
`d/b/a Audi of America, Inc.et al., Case No. 2:14-cv-
`03113 (C.D. Cal.)
`Signal IP, Inc. v. Volvo Cars of North America, LLC,
`Case No. 2:14-cv-03107 (C.D. Cal.)
`Takata Seat Belts Inc. v. Delphi Automotive Sys, et
`al., Case No. 5-04-cv-00464 (W.D. Tex.)
`
`
`Concluded
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`Concluded
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`Concluded
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`Concluded
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`Concluded
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`Concluded
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`Concluded
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`Concluded
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`Concluded
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`4
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`Proceeding No.: IPR2015-01004
`Attorney Docket No. 15625-0020IP1
`
`Conclusion
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`For at least these reasons, Petitioner respectfully requests that the Board
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`grant Petitioner’s motion to terminate the above-captioned inter partes review
`
`proceeding.
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`Date: April 7, 2016
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`Respectfully submitted,
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`
`
`
`
` /Joshua A. Griswold/
`Joshua A. Griswold, Reg. No. 46,310
`Attorneys for Petitioner
`
`Fish & Richardson P.C.
`Customer Number 26171
`Telephone: (214) 292-4034
`
`/Holly J. Atkinson/
`
`Holly J. Atkinson, Reg. No. 69,934
`Attorneys for Patent Owner
`
`Ascenda Law Group, PC
`333 W San Carlos St., Suite 200
`San Jose, CA 95110
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`Date: April 7, 2016
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`5
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`Proceeding No.: IPR2015-01004
`Attorney Docket No. 15625-0020IP1
`
`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR § 42.6(e)(1), the undersigned certifies that on April 7,
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`2016, a complete and entire copy of the Petitioner’s Motion to Terminate
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`Proceeding and Exhibits 1007-1008 were provided via email, to Patent Owner by
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`serving the email correspondence address of record as follows:
`
`Tarek N. Fahmi
`Holly J. Atkinson
`Ascenda Law Group, PC
`333 W San Carlos St., Suite 200
`San Jose, CA 95110
`
` tarek.fahmi@ascendalaw.com
`holly.atkinson@ascendalaw.com
`
`Email:
`
`
`
`
`
`
`
`/Diana Bradley/
`
`Diana Bradley
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`(858) 678-5667
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