`Tel: 571-272-7822
`
`Paper 11
`Entered: January 4, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`VOLKSWAGEN GROUP OF AMERICA, INC.,
`Petitioner,
`
`v.
`
`SIGNAL IP, INC.,
`Patent Owner.
`
`Case IPR2015-01088
`Patent 5,954,775
`
`
`
`
`
`
`
`
`
`Before JOSIAH C. COCKS, MITCHELL G. WEATHERLY, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`BOUDREAU, Administrative Patent Judge.
`
`DECISION
`Joint Motion to Terminate
`35 U.S.C. § 317; 37 C.F.R. §§ 42.72, 42.74
`
`
`
`
`
`
`
`IPR2015-01088
`Patent 5,954,775
`
`On December 30, 2015, Volkswagen Group of America, Inc.
`(“Petitioner”) and Signal IP, Inc. (“Patent Owner”) filed a “Joint Motion to
`Terminate Inter Partes Review” (Paper 9, “Mot.” or “Motion”), indicating
`that the parties have resolved their dispute and have reached an agreement
`to, among other things, terminate this review (Mot. 2). The parties
`concurrently filed a copy of a “Settlement and License Agreement” executed
`by Petitioner and Patent Owner (Ex. 2004,1 “Agreement”) and a “Joint
`Request to Keep Paper Separate” (Paper 10, “Req.”) indicating that the
`Agreement contains business confidential information and requesting that it
`be kept as a separate paper to be made available only under the provisions of
`35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) (Req. 2).
`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 the patent owner, unless the Office has decided
`the merits of the proceeding before the request for termination is filed.”
`The trial phase of this proceeding is in its early stages, as Patent
`Owner has not yet filed a Patent Owner Response and Petitioner has not yet
`filed a Reply. Accordingly, we have not yet decided the merits of the
`proceeding. Moreover, apart from the instant Motion, there are no
`outstanding motions in this proceeding. Under these circumstances, we are
`persuaded that it is appropriate to terminate this proceeding with respect to
`both Petitioner and Patent Owner without rendering a final written decision
`pursuant to 35 U.S.C. § 318(a). See 37 C.F.R. §§ 42.72, 42.74.
`
`1 The parties filed the Settlement and License Agreement as Exhibit 2001,
`but Patent Owner previously filed copies of certain district court filings as
`Exhibits 2001 through 2003 on September 3, 2015. Accordingly, the
`Settlement and License Agreement has been renumbered as Exhibit 2004.
`
`2
`
`
`
`IPR2015-01088
`Patent 5,954,775
`
`Accordingly, it is
`ORDERED that the Joint Motion to Terminate Inter Partes Review is
`granted;
`FURTHER ORDERED that the Inter Partes Review instituted on
`October 29, 2015, is terminated with respect to both Petitioner and Patent
`Owner; and
`FURTHER ORDERED that the Joint Request to Keep Paper Separate
`is granted, and Exhibit 2004 is to be kept separate from the file of the
`involved U.S. Patent No. 5,954,775 and treated as confidential business
`information to be made available only under the provisions of 35 U.S.C.
`§ 317(b) and 37 C.F.R. § 42.74(c).
`
`
`
`
`
`3
`
`
`
`4
`
`IPR2015-01088
`Patent 5,954,775
`
`
`For PETITIONER:
`
`Michael J. Lennon
`Clifford A. Ulrich
`Michelle Carniaux
`KENYON & KENYON LLP
`mlennon@kenyon.com
`culrich@kenyon.com
`mcarniaux@kenyon.com
`ptab@kenyon.com
`
`For PATENT OWNER:
`
`Tarek Fahmi
`Holly J. Atkinson
`ASCENDA LAW GROUP, PC
`tarek.fahmi@ascendalaw.com
`holly.atkinson@ascendalaw.com
`patents@ascendalaw.com
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