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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.
`____________
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`Case IPR2015-010041
`Patent 6,012,007
`____________
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`KIA MOTORS AMERICA, INC AND SIGNAL IP, INC.
`JOINT MOTION TO TERMINATE
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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 Kia Motors America, Inc. (“Kia”)
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`hereby jointly move the Patent Trial and Appeal Board (“Board”) to terminate this
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`Inter Partes Review of U.S. Patent No. 6,012,007 (Case No. IPR2015-01004).
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`I.
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`REASONS FOR GRANTING THE MOTION
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`Generally, the Board expects that a proceeding will terminate after the filing
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`of a settlement agreement. See, e.g., Office Patent Trial Practice Guide, 77 Fed.
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`Reg. 48,756, 48,768 (Aug. 14, 2012). The Board authorized filing this motion by
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`way of email dated May 25, 2016. Guidance as to the content of a motion to
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`terminate is provided in IPR2013-00428, Paper No. 56. There, the Board indicated
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`that a joint motion, such as this one, should (a) include a brief explanation as to
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`why termination is appropriate; (b) identify all parties in any related litigation
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`involving the patent at issue; (c) identify any related proceedings currently before
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`the Office; and (d) discuss specifically the current status of each such related
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`litigation or proceeding with respect to each party to the litigation or proceeding.
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`Id. at 2. This motion satisfies each of the above requirements and is accompanied
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`by the parties’ settlement agreement (Ex. 2003), as required by 35 U.S.C. § 317(b)
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`and 35 C.F.R. § 42.74 (b).
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`a. Brief Explanation of Why Termination is Appropriate
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`Termination is appropriate under 35 U.S.C. § 317(a) because oral argument
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`has not been held, the Board has not decided the merits of the proceeding, and a
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`final written decision has not been issued. Petitioner American Honda Motor Co.
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`Inc. (“Honda”), filed its petition for inter partes review on April 3, 2015, and trial
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`was instituted on October 1, 2015. Petitioners Nissan North America, Inc.
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`(“Nissan”) and Kia Motors America, Inc. were joined as parties to this proceeding
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`via Motions for Joinder in IPR2016-00113 and IPR2016-00115, respectively, on
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`February 2, 2016. On April 12, 2016, the Board granted a motion to terminate this
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`proceeding with respect to Petitioner Honda. A motion to terminate with respect to
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`Petitioner Nissan is presently pending (Paper No. 24).
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`Further, Petitioner Kia and Patent Owner Signal IP have resolved their
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`dispute and have entered into a written settlement agreement to, inter alia, jointly
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`request termination of this inter partes review. A true and correct copy of the
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`settlement agreement is being filed herewith as Exhibit 2003, pursuant to 35
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`U.S.C. § 317(b) and 37 C.F.R. § 42.74(b). The underlying litigation between the
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`parties has already been dismissed.
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`Thus, termination of the proceeding satisfies the Congressional goal of
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`establishing a more efficient and streamlined patent system that, inter alia, limits
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`unnecessary and counterproductive litigation costs. See “Changes to Implement
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`Inter Partes Review Proceedings, Post-Grant Review Proceedings, and Transitional
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`Program for Covered Business Method Patents,” Final Rule, 77 Fed. Reg., No.
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`157, p. 48680 (Tuesday, August 14, 2012). By permitting termination of review
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`proceedings as to all parties, upon settlement of their disputes, the USPTO
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`provides a measure of certainty as to the outcome of such proceedings. Such
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`certainty helps foster an environment that promotes settlements, creating a timely,
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`cost-effective alternative to litigation. Further, pursuant to 35 U.S.C. § 317(a), no
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`estoppel shall attach to Petitioner Kia or its privies.
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`b. 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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`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 in Signal IP, Inc. v. BMW of
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`North America, LLC et al., Case No. 2:14-cv-03111-JAK, regarding, inter alia,
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`U.S. Patent 6,012,007 at issue in the above-noted litigation. On May 20, 2015,
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`various parties to Case No. 2:14-cv-03111-JAK and its related cases entered into a
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`stipulation for entry of a partial 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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`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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`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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`Former litigations involving U.S. Patent No. 6,012,007 that have now been
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`terminated are:
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`• Signal IP, Inc. v. Toyota North America, Inc. et al., 2-15-cv-05162 (CACD);
`• Signal IP, Inc. v. Hyundai Motor America, 8-15-cv-01085 (CACD);
`• Signal IP, Inc. v. Hyundai Motor America, 2-15-cv-05166 (CACD);
`• Signal IP, Inc. v. Ford Motor Company, 2-14-cv-13729 (MIED);
`• Signal IP, Inc. v. Fiat USA Inc. et al., 2-14-cv-03105 (CACD);
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`• Signal IP, Inc. v. Ford Motor Company, 2-14-cv-03106 (CACD);
`• Signal IP, Inc. v. Mercedes-Benz USA, LLC et al., 2-14-cv-03109 (CACD);
`• Signal IP, Inc. v. BMW of North America, LLC et al., 2-14-cv-03111
`(CACD);
`• Signal IP, Inc. v. Volkswagen Group of America, Inc. d/b/a Audi of America,
`Inc. et al., 2-14-cv-03113 (CACD);
`• Signal IP, Inc. v. Porsche Cars North America, Inc., 2-14-cv-03114
`(CACD);
`• Signal IP, Inc. v. Jaguar Land Rover North America, LLC., 2-14-cv-03108
`(CACD);
`• Signal IP, Inc. v. Volvo Cars of North America, LLC, 2-14-cv-03107
`(CACD);
`• Signal IP, Inc. v. Subaru of America, Inc., 2-14-cv-02963 (CACD);
`• Signal IP, Inc. v. Suzuki Motor of America, Inc., 8-14-cv-00607 (CACD);
`• Signal IP, Inc. v. Nissan North America, Inc., 2-14-cv-02962 (CACD);
`• Signal IP, Inc. v. Kia Motors America, Inc., 2-14-cv-02457 (CACD);
`• Signal IP, Inc. v. American Honda Motor Co., Inc. et al., 2-14-cv-02454
`(CACD);
`• Signal IP, Inc. v. Mitsubishi Motors North America, Inc., Case No. 8-14-cv-
`00497 (CACD); and
`• Signal IP, Inc. v. Mitsubishi Motors North America, Inc., Case No. 2-14-cv-
`02462 (CACD); and
`• Signal IP, Inc. v. Mazda Motor of America, Inc., Case No 2-14-cv-02459
`(CACD).
`• Signal IP, Inc. v. Mazda Motor of America, Inc., Case No 8-14-cv-00491
`(CACD).
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`c. 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), and was previously the subject of IPR2015-01116 (not
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`instituted).
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`Sections II.b and II.c above indicate the status of each related litigation or
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`proceeding with respect to each party to the litigation or proceeding. Section II.a
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`provides a brief explanation as to why termination is appropriate. Therefore, Signal
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`IP and Kia respectfully request termination of this Inter Partes Review of U.S.
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`Patent No. 6,012,007, Case No. IPR2015-01004.
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`Dated: May 26, 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
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`Counsel for Patent Owner,
`Signal IP, Inc.
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`Respectfully submitted,
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`/Heath J. Briggs/
`Heath J. Briggs, Reg. No. 54,919
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`GREENBERG TRAURIG, LLP
`1200 17th St., Ste. 2400
`Denver, CO 80202
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`303-572-6500
`KiaGTIPR@gtlaw.com
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`Counsel for Petitioner, Kia Motors
`America, Inc.
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`EXHIBIT LIST
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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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`2003
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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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`Kia-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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`KIA MOTORS AMERICA, INC AND SIGNAL IP, INC.
`JOINT MOTION TO TERMINATE
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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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`was served on May 26, 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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`Patrick A, Lujin
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`Tawni L. Wilhelm
`SHOOK, HARDY & BACON LLP
`2555 Grand Blvd.
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`Kansas City, MO 64108
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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 26, 2016
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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