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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
`____________
`
`
`
`KIA MOTORS AMERICA, INC AND SIGNAL IP, INC.
`JOINT MOTION TO TERMINATE
`
`
`
`
`
`
`
`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 Kia Motors America, Inc. (“Kia”)
`
`hereby jointly move the Patent Trial and Appeal Board (“Board”) to terminate this
`
`Inter Partes Review of U.S. Patent No. 6,012,007 (Case No. IPR2015-01004).
`
`
`
`I.
`
`REASONS FOR GRANTING THE MOTION
`
`Generally, the Board expects that a proceeding will terminate after the filing
`
`of a settlement agreement. See, e.g., Office Patent Trial Practice Guide, 77 Fed.
`
`Reg. 48,756, 48,768 (Aug. 14, 2012). The Board authorized filing this motion by
`
`way of email dated May 25, 2016. Guidance as to the content of a motion to
`
`terminate is provided in IPR2013-00428, Paper No. 56. There, the Board indicated
`
`that a joint motion, such as this one, should (a) include a brief explanation as to
`
`why termination is appropriate; (b) identify all parties in any related litigation
`
`involving the patent at issue; (c) identify any related proceedings currently before
`
`the Office; and (d) discuss specifically the current status of each such related
`
`litigation or proceeding with respect to each party to the litigation or proceeding.
`
`Id. at 2. This motion satisfies each of the above requirements and is accompanied
`
`by the parties’ settlement agreement (Ex. 2003), as required by 35 U.S.C. § 317(b)
`
`and 35 C.F.R. § 42.74 (b).
`
`
`
`
`
`- 1 -
`
`

`
`a. Brief Explanation of Why Termination is Appropriate
`
`Termination is appropriate under 35 U.S.C. § 317(a) because oral argument
`
`has not been held, the Board has not decided the merits of the proceeding, and a
`
`final written decision has not been issued. 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.
`
`(“Nissan”) 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. A motion to terminate with respect to
`
`Petitioner Nissan is presently pending (Paper No. 24).
`
`Further, Petitioner Kia and Patent Owner Signal IP have resolved their
`
`dispute and have entered into a written settlement agreement to, inter alia, jointly
`
`request termination of this inter partes review. A true and correct copy of the
`
`settlement agreement is being filed herewith as Exhibit 2003, pursuant to 35
`
`U.S.C. § 317(b) and 37 C.F.R. § 42.74(b). The underlying litigation between the
`
`parties has already been dismissed.
`
`Thus, termination of the proceeding satisfies the Congressional goal of
`
`establishing a more efficient and streamlined patent system that, inter alia, limits
`
`unnecessary and counterproductive litigation costs. See “Changes to Implement
`
`
`
`- 2 -
`
`

`
`Inter Partes Review Proceedings, Post-Grant Review Proceedings, and Transitional
`
`Program for Covered Business Method Patents,” Final Rule, 77 Fed. Reg., No.
`
`157, p. 48680 (Tuesday, August 14, 2012). By permitting termination of review
`
`proceedings as to all parties, upon settlement of their disputes, the USPTO
`
`provides a measure of certainty as to the outcome of such proceedings. Such
`
`certainty helps foster an environment that promotes settlements, creating a timely,
`
`cost-effective alternative to litigation. Further, pursuant to 35 U.S.C. § 317(a), no
`
`estoppel shall attach to Petitioner Kia or its privies.
`
`b. 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).
`
`On April 17, 2015, the U.S. District Court for the Central District of
`
`California entered an Order re Claims Construction in Signal IP, Inc. v. BMW of
`
`North America, LLC et al., Case No. 2:14-cv-03111-JAK, regarding, inter alia,
`
`U.S. Patent 6,012,007 at issue in the above-noted litigation. On May 20, 2015,
`
`various parties to Case No. 2:14-cv-03111-JAK and its related cases 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
`
`
`
`- 3 -
`
`

`
`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.
`
`
`
`Former litigations involving U.S. Patent No. 6,012,007 that have now been
`
`terminated are:
`
`• 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);
`
`
`
`- 4 -
`
`

`
`• 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).
`
`
`
`- 5 -
`
`

`
`c. Status of Related Proceedings
`
`U.S. Patent No. 6,012,007 is also at issue in IPR2016-00292 and IPR2016-
`
`00366 (both pending), and was previously the subject of IPR2015-01116 (not
`
`instituted).
`
`
`
`Sections II.b and II.c above indicate the status of each related litigation or
`
`proceeding with respect to each party to the litigation or proceeding. Section II.a
`
`provides a brief explanation as to why termination is appropriate. Therefore, Signal
`
`IP and Kia respectfully request termination of this Inter Partes Review of U.S.
`
`Patent No. 6,012,007, Case No. IPR2015-01004.
`
`
`
`Dated: May 26, 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,
`
`
`
`
`/Heath J. Briggs/
`Heath J. Briggs, Reg. No. 54,919
`
`GREENBERG TRAURIG, LLP
`1200 17th St., Ste. 2400
`Denver, CO 80202
`
`303-572-6500
`KiaGTIPR@gtlaw.com
`
`Counsel for Petitioner, Kia Motors
`America, Inc.
`
`
`
`- 6 -
`
`

`
`EXHIBIT LIST
`
`
`
`Exhibit No.
`
`Description
`
`2001
`
`2002
`
`2003
`
`
`
`
`
`
`
`Transcript of deposition of Dr. Carr.
`
`Nissan-Signal IP Settlement Agreement (Parties and Board
`
`Only).
`
`Kia-Signal IP Settlement Agreement (Parties and Board
`
`Only).
`
`
`
`
`
`
`
`
`
`

`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing
`
`
`
`KIA MOTORS AMERICA, INC AND SIGNAL IP, INC.
`JOINT MOTION TO TERMINATE
`
`
`
`
`
`
`
`
`
`
`
`
`
`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 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:
`
`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 26, 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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