`Entered: April 12, 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.
`
`
`
`DECISION
`Joint Motion to Terminate with Respect to
`Petitioner American Honda Motor Co., Inc.
`35 U.S.C. § 317(a)
`
`
`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
`
`
`On April 7, 2016, Petitioner American Honda Motor Co., Inc.
`(“Honda”) and Patent Owner, filed a joint motion to terminate this
`proceeding with respect to Petitioner Honda under 35 U.S.C. § 317(a).
`Paper 20 (“Mot.”).
`Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under
`this chapter shall be terminated with respect to any petitioner upon the joint
`request of the petitioner and patent owner, unless the Office has decided the
`merits of the proceeding before the request for termination is filed.” In their
`joint motion, the parties request termination of this proceeding because “a
`Honda entity has obtained a license to [U.S. Patent No. 6,012,007] from a
`third party” and “[t]he 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 District of California, was dismissed on March
`23, 2016.” Mot. 1. The merits of this proceeding have not been decided.
`Under 35 U.S.C. § 317(b), any agreement or understanding between
`Patent Owner and Petitioner, 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, and a
`true copy of such agreement or understanding shall be filed in the Office.
`The parties represent that “Petitioner [Honda] and Patent Owner have
`entered into a written agreement memorializing the prior oral agreement to
`jointly request termination of this inter partes review as to Petitioner Honda”
`and that “[a] true and correct copy is being filed herewith as Exhibit 1007,
`pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b).” Id. Because, as
`discussed above, the underlying litigation was dismissed as a result of
`Petitioner Honda obtaining a license to U.S. Patent No. 6,012,007 from a
`
`2
`
`
`
`IPR2015-01004
`Patent 6,012,007
`
`third party, the parties represent there is no settlement agreement between
`Petitioner Honda and Patent Owner. Id. at 1–2. The parties represent that
`The third party is neither a parent nor subsidiary of, and has no
`other corporate interrelationship to, Petitioner Honda, Patent
`Owner Signal IP or any of Petitioner’s or Patent Owner’s related
`entities. Additionally, Petitioner Honda and its related corporate
`entities are not a party to the agreement between Patent Owner
`and the third party. Thus, neither agreement represents an
`“agreement or understanding between the patent owner and a
`petitioner,” as recited in 35 U.S.C. § 317(b), or an “agreement or
`understanding between the parties,” as recited in 37 C.F.R.
`§42.74(b). Therefore, neither agreement should be filed. To
`satisfy § 317 the parties have memorialized their informal oral
`agreement regarding jointly terminating this inter partes review
`in the agreement filed as Exhibit 1007. There are no other
`agreements or understandings between Patent Owner and
`Petitioner, including any collateral agreements referred to in such
`agreement or understanding, made in connection with, or in
`contemplation of, the termination of this inter partes review.
`Id. In view of these representations, we are persuaded that Petitioner Honda
`and Patent Owner have met the requirements of 35 U.S.C. § 317(b).
`Upon consideration of the facts in the case before us, we grant the
`joint motion and terminate this proceeding with respect to Petitioner Honda.
`The proceeding is not terminated with respect to Nissan North America, Inc.
`or Kia Motors America, Inc.
`
`It is
`ORDERED that the joint motion to terminate this proceeding with
`respect to Petitioner Honda is granted.
`
`3
`
`
`
`
`
`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
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
