`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