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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`AMERICAN HONDA MOTOR CO., INC., NISSAN NORTH AMERICA, INC.,
`AND KIA MOTORS AMERICA, INC.,
`Petitioners,
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`v.
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`SIGNAL IP, INC.
`Patent Owner.
`____________
`
`Case IPR2015-010041
`Patent 6,012,007
`____________
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`
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`NISSAN NORTH AMERICA, INC AND SIGNAL IP, INC.
`JOINT MOTION TO TERMINATE AS TO
`PETITIONER NISSAN NORTH AMERICA, INC.
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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.
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`Pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.74(a)-(b), Patent Owner
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`Signal IP, Inc. (“Signal IP”) and Petitioner Nissan North America, Inc. (“Nissan”)
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`hereby jointly move the Patent Trial and Appeal Board (“Board”) to terminate,
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`with regard to Petitioner Nissan only, this Inter Partes Review of U.S. Patent No.
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`6,012,007 (Case No. IPR2015-01004). The Board authorized this motion by way
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`of email dated May 20, 2016.
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`Petitioner American Honda Motor Co. Inc. (“Honda”), filed its petition for
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`inter partes review on April 3, 2015, and trial was instituted on October 1, 2015.
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`Petitioners Nissan North America, Inc. and Kia Motors America, Inc. were joined
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`as parties to this proceeding via Motions for Joinder in IPR2016-00113 and
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`IPR2016-00115, respectively, on February 2, 2016. On April 12, 2016, the Board
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`granted a motion to terminate this proceeding with respect to Petitioner Honda.
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`Termination with respect to Petitioner Nissan is now proper under 35 U.S.C.
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`§ 317(a), because the parties are jointly requesting termination and the Office has
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`not yet “decided the merits of the proceeding before the request for termination is
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`filed.” Further, Petitioner Nissan and Patent Owner Signal IP have entered into a
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`written settlement agreement to, inter alia, jointly request termination of this inter
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`partes review as to Petitioner Nissan. A true and correct copy of the settlement
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`agreement is being filed herewith as Exhibit 2002, pursuant to 35 U.S.C. § 317(b)
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`and 37 C.F.R. § 42.74(b). Pursuant to 35 U.S.C. § 317(a), no estoppel shall attach
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`to Petitioner Nissan or its privies.
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`Status of Related Litigation
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`U.S. Patent No. 6,012,007 is at issue in the following pending litigation:
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`• Signal IP, Inc. v. Fiat USA, Inc. et al., 2-14-cv-13864 (MIED);
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`• Signal IP, Inc. v. Nissan North America, Inc., 2-14-cv-02962(CACD)
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`(settled);
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`• Signal IP, Inc. v. Kia Motors America, Inc., 2-14-cv-02457 (CACD)
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`(settled).
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`
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`On April 17, 2015, the U.S. District Court for the Central District of
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`California entered an Order re Claims Construction regarding, inter alia, U.S.
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`Patent 6,012,007 at issue in the above-noted litigations. On May 20, 2015, various
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`parties to the above-noted litigations entered into a stipulation for entry of a partial
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`final judgment. Pursuant to the stipulation,
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`In light of the Court’s claim construction order, Plaintiff and
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`Defendants stipulate to entry of a partial final judgment that the
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`following claims are invalid due to indefiniteness under 35
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`- 2 -
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`U.S.C. § 112, paragraph 2: . . . claims 1, 8, 9, 17, 18, 19, and 20
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`of the ’007 patent. Plaintiff and Defendants reserve all appellate
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`rights including, but not limited to, the right to appeal the
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`Court’s April 17, 2015 claim construction order to the United
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`States Court of Appeals for the Federal Circuit. Plaintiff
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`reserves all rights as to claims not addressed by the Court’s
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`claim construction order, or any new claims that may be issued
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`by the United States Patent Office.
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`
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`On May 22, 2015, pursuant to the above-referenced stipulation, the U.S.
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`District Court for the Central District of California entered a Partial Judgment of
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`Invalidity, that
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`Claims 1, 8, 9, 17, 18, 19, and 20 of U.S. Patent No. 6,012,007
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`(“the ’007 patent”) are invalid as indefinite under 35 U.S.C. §
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`112, paragraph 2.
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`Status of Related Proceedings
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`U.S. Patent No. 6,012,007 is also at issue in IPR2016-00292 and IPR2016-
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`00366 (both pending).
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`- 3 -
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`For the foregoing reasons, Signal IP and Nissan respectfully request
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`termination of this Inter Partes Review of U.S. Patent No. 6,012,007, Case No.
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`IPR2015-01004, with regard to Petitioner Nissan only.
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`
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`Dated: May 23, 2016
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`/Tarek N. Fahmi/__________
`Tarek N. Fahmi, Reg. No. 41,402
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`ASCENDA LAW GROUP, PC
`333 W San Carlos St., Ste. 200
`San Jose, CA 95110
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`866-877-4883
`tarek.fahmi@ascendalawcom
`
`Counsel for Patent Owner
`Signal IP, Inc.
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`Respectfully submitted,
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`
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`/Patrick A. Lujin/
`Patrick A, Lujin, Reg. No. 35,260
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`
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`SHOOK, HARDY & BACON LLP
`2555 Grand Blvd.
`Kansas City, MO 64108
`
`816-474-6550
`plujin@shb.com
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`Counsel for Petitioner Nissan North
`America, Inc.
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`EXHIBIT LIST
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`
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`Exhibit No.
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`Description
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`2001
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`2002
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`Transcript of deposition of Dr. Carr.
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`Nissan-Signal IP Settlement Agreement (Parties and Board
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`Only).
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing
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`
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`NISSAN NORTH AMERICA, INC AND SIGNAL IP, INC.
`JOINT MOTION TO TERMINATE AS TO
`PETITIONER NISSAN NORTH AMERICA, INC.
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`Counsel for Petitioner Kia Motors
`America, Inc.:
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`Heath J. Briggs
`Patrick J. McCarthy
`GREENBERG TRAURIG, LLP
`1200 17th St., Ste. 2400
`Denver, CO 80202
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`KiaGTIPR@gtlaw.com
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`
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`
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`was served on May 23, 2016, by filing this document though the Patent Review
`Processing System as well as by delivering a copy via email directed to the
`attorneys of record for the Petitioners at the following address:
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`Counsel for Petitioner Nissan North
`America, Inc.:
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`
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`Patrick A, Lujin
`
`
`Tawni L. Wilhelm
`SHOOK, HARDY & BACON LLP
`2555 Grand Blvd.
`
`
`Kansas City, MO 64108
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`
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`plujin@shb.com
`twilhelm@shb.com
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`Respectfully submitted,
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`/Tarek N. Fahmi/_____________
`Tarek N. Fahmi, Reg. No. 41,402
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`May 23, 2016
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`ASCENDA LAW GROUP, PC
`333 W San Carlos St., Ste. 200
`San Jose, CA 95110
`
`
`
`
`866-877-4883
`tarek.fahmi@ascendalawcom