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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.,
`Petitioners,
`
`v.
`
`SIGNAL IP, INC.
`Patent Owner.
`____________
`
`Case IPR2015-010041
`Patent 6,012,007
`____________
`
`
`
`NISSAN NORTH AMERICA, INC AND SIGNAL IP, INC.
`JOINT MOTION TO TERMINATE AS TO
`PETITIONER NISSAN NORTH AMERICA, INC.
`
`
`
`
`
`
`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.
`
`
`
`
`
`

`
`Pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.74(a)-(b), Patent Owner
`
`Signal IP, Inc. (“Signal IP”) and Petitioner Nissan North America, Inc. (“Nissan”)
`
`hereby jointly move the Patent Trial and Appeal Board (“Board”) to terminate,
`
`with regard to Petitioner Nissan only, this Inter Partes Review of U.S. Patent No.
`
`6,012,007 (Case No. IPR2015-01004). The Board authorized this motion by way
`
`of email dated May 20, 2016.
`
`Petitioner American Honda Motor Co. Inc. (“Honda”), filed its petition for
`
`inter partes review on April 3, 2015, and trial was instituted on October 1, 2015.
`
`Petitioners 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, on February 2, 2016. On April 12, 2016, the Board
`
`granted a motion to terminate this proceeding with respect to Petitioner Honda.
`
`Termination with respect to Petitioner Nissan is now proper under 35 U.S.C.
`
`§ 317(a), because the parties are jointly requesting termination and the Office has
`
`not yet “decided the merits of the proceeding before the request for termination is
`
`filed.” Further, Petitioner Nissan and Patent Owner Signal IP have entered into a
`
`written settlement agreement to, inter alia, jointly request termination of this inter
`
`partes review as to Petitioner Nissan. A true and correct copy of the settlement
`
`agreement is being filed herewith as Exhibit 2002, pursuant to 35 U.S.C. § 317(b)
`
`
`
`- 1 -
`
`

`
`and 37 C.F.R. § 42.74(b). Pursuant to 35 U.S.C. § 317(a), no estoppel shall attach
`
`to Petitioner Nissan or its privies.
`
`
`
`Status of Related Litigation
`
`U.S. Patent No. 6,012,007 is at issue in the following pending litigation:
`
`
`• Signal IP, Inc. v. Fiat USA, Inc. et al., 2-14-cv-13864 (MIED);
`
`• Signal IP, Inc. v. Nissan North America, Inc., 2-14-cv-02962(CACD)
`
`(settled);
`
`• Signal IP, Inc. v. Kia Motors America, Inc., 2-14-cv-02457 (CACD)
`
`(settled).
`
`
`
`On April 17, 2015, the U.S. District Court for the Central District of
`
`California entered an Order re Claims Construction regarding, inter alia, U.S.
`
`Patent 6,012,007 at issue in the above-noted litigations. On May 20, 2015, various
`
`parties to the above-noted litigations entered into a stipulation for entry of a partial
`
`final judgment. Pursuant to the stipulation,
`
`
`
`
`
`In light of the Court’s claim construction order, Plaintiff and
`
`Defendants stipulate to entry of a partial final judgment that the
`
`following claims are invalid due to indefiniteness under 35
`
`- 2 -
`
`

`
`U.S.C. § 112, paragraph 2: . . . claims 1, 8, 9, 17, 18, 19, and 20
`
`of the ’007 patent. Plaintiff and Defendants reserve all appellate
`
`rights including, but not limited to, the right to appeal the
`
`Court’s April 17, 2015 claim construction order to the United
`
`States Court of Appeals for the Federal Circuit. Plaintiff
`
`reserves all rights as to claims not addressed by the Court’s
`
`claim construction order, or any new claims that may be issued
`
`by the United States Patent Office.
`
`
`
`On May 22, 2015, pursuant to the above-referenced stipulation, the U.S.
`
`District Court for the Central District of California entered a Partial Judgment of
`
`Invalidity, that
`
`Claims 1, 8, 9, 17, 18, 19, and 20 of U.S. Patent No. 6,012,007
`
`(“the ’007 patent”) are invalid as indefinite under 35 U.S.C. §
`
`112, paragraph 2.
`
`
`
`Status of Related Proceedings
`
`U.S. Patent No. 6,012,007 is also at issue in IPR2016-00292 and IPR2016-
`
`00366 (both pending).
`
`
`
`
`
`- 3 -
`
`

`
`For the foregoing reasons, Signal IP and Nissan respectfully request
`
`termination of this Inter Partes Review of U.S. Patent No. 6,012,007, Case No.
`
`IPR2015-01004, with regard to Petitioner Nissan only.
`
`
`
`Dated: May 23, 2016
`
`
`
`
`
`
`
`
`/Tarek N. Fahmi/__________
`Tarek N. Fahmi, Reg. No. 41,402
`
`ASCENDA LAW GROUP, PC
`333 W San Carlos St., Ste. 200
`San Jose, CA 95110
`
`
`
`
`
`866-877-4883
`tarek.fahmi@ascendalawcom
`
`Counsel for Patent Owner
`Signal IP, Inc.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`/Patrick A. Lujin/
`Patrick A, Lujin, Reg. No. 35,260
`
`
`
`SHOOK, HARDY & BACON LLP
`2555 Grand Blvd.
`Kansas City, MO 64108
`
`816-474-6550
`plujin@shb.com
`
`Counsel for Petitioner Nissan North
`America, Inc.
`
`
`
`- 4 -
`
`

`
`EXHIBIT LIST
`
`
`
`Exhibit No.
`
`Description
`
`2001
`
`2002
`
`
`
`
`
`Transcript of deposition of Dr. Carr.
`
`Nissan-Signal IP Settlement Agreement (Parties and Board
`
`Only).
`
`
`
`
`
`
`
`
`
`

`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing
`
`
`
`NISSAN NORTH AMERICA, INC AND SIGNAL IP, INC.
`JOINT MOTION TO TERMINATE AS TO
`PETITIONER NISSAN NORTH AMERICA, INC.
`
`
`
`
`
`
`
`
`
`
`
`
`Counsel for Petitioner Kia Motors
`America, Inc.:
`
`Heath J. Briggs
`Patrick J. McCarthy
`GREENBERG TRAURIG, LLP
`1200 17th St., Ste. 2400
`Denver, CO 80202
`
`KiaGTIPR@gtlaw.com
`
`
`
`
`
`
`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:
`
`Counsel for Petitioner Nissan North
`America, Inc.:
`
`
`
`
`
`
`
`Patrick A, Lujin
`
`
`Tawni L. Wilhelm
`SHOOK, HARDY & BACON LLP
`2555 Grand Blvd.
`
`
`Kansas City, MO 64108
`
`
`
`plujin@shb.com
`twilhelm@shb.com
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`/Tarek N. Fahmi/_____________
`Tarek N. Fahmi, Reg. No. 41,402
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`May 23, 2016
`
`
`
`
`ASCENDA LAW GROUP, PC
`333 W San Carlos St., Ste. 200
`San Jose, CA 95110
`
`
`
`
`866-877-4883
`tarek.fahmi@ascendalawcom

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