`____________
`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
`______________
`
`
`
`
`
`JOINT MOTION TO TERMINATE INTER PARTES REVIEW
`
`1
`
`
`
`
`
`Pursuant to 35 U.S.C. § 317(a), the Petitioner and Patent Owner jointly
`
`request termination of this inter partes review, which is directed at U.S. Patent No.
`
`5,954,775.
`
`
`
`Termination of this review is appropriate because the parties have resolved
`
`their dispute and have reached an agreement to, among other things, terminate this
`
`review. Ex. 2001, Settlement and License Agreement (submitted as business
`
`confidential information pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c)).
`
`The petition for review was filed on April 30, 2015. The Board has entered a
`
`decision instituting inter partes review on October 29, 2015. “Generally, the Board
`
`expects that a proceeding will terminate after the filing of a settlement agreement.”
`
`Oracle Corp. v. Cmty. United IP, LLC, CBM2013-00015, Paper 13 (July 25, 2013)
`
`(citing Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48765–66 (Aug.
`
`14, 2012)).
`
`US Pat. 5,954,775 is at issue in the following litigations:
`
`• Signal IP, Inc. v. Mercedes-Benz USA, LLC et al., 2-14-cv-03109
`
`(CACD) (pending);
`
`• Signal IP, Inc. v. BMW of North America, LLC et al., 2-14-cv-03111
`
`(CACD) (pending); and
`
`• Signal IP, Inc. v. Volkswagen Group of America, Inc. d/b/a Audi of
`
`America, Inc. et al., 2-14-cv-03113 (CACD) (dismissed).
`
`2
`
`
`
`
`
`A true copy of the parties’ written settlement agreement is being filed as an
`
`exhibit contemporaneously with this joint motion to terminate. The settlement
`
`agreement has been filed for access by the “Parties and Board Only.” The parties
`
`desire that the settlement agreement be maintained as business confidential
`
`information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), and a separate
`
`joint request for such is being filed contemporaneously.
`
`
`
`
`
`
`
`Dated: 12/30/2015
`
`
`
`
`
`
`
`
`
`
`
`Respectfully Submitted,
`
`By: /Michael J. Lennon/
`Michael J. Lennon
`(Reg. No. 26,562; mlennon@kenyon.com)
`Clifford A. Ulrich
`(Reg. No. 42,194; culrich@kenyon.com)
`Michelle Carniaux
`(Reg. No. 36,098; mcarniaux@kenyon.com)
`Kenyon & Kenyon LLP
`One Broadway
`New York, NY 10004
`Tel.: 212.425.7200
`Fax: 212.425.5288
`
`
`
`By: /Tarek N. Fahmi/
`Tarek N. Fahmi (Reg. No. 41,402)
`tarek.fahmi@ascendalaw.com
`Holly J. Atkinson (Reg. No. 69,934)
`holly.atkinson@ascendalaw.com
`Ascenda Law Group, PC
`333 W. San Carlos St., Suite 200
`San Jose, CA 95110
`Tel.: 866-877-4883
`Fax: 408-773-6177
`patents@ascendalaw.com
`
`3
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Exhibit No.
`
`2001
`
`
`
`
`EXHIBIT LIST
`
`
`Description
`
`Settlement Agreement (Parties and Board Only)
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing
`
`JOINT MOTION TO TERMINATE INTER PARTES REVIEW
`
`was served on December 30, 2015, 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 Petitioner at the following address:
`
`Michael J. Lennon
`Clifford A. Ulrich
`Michelle Carniaux
`Kenyon & Kenyon LLP
`One Broadway
`New York NY 10004
`
`ptab@kenyon.com
`
`
`
`The parties have agreed to electronic service in this proceeding.
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`/Tarek N. Fahmi/
`Tarek N. Fahmi
`Reg. No. 41,402
`
`
`
`
`
`
`
`
`
`
`
`Dated: December 30, 2015
`
`
`
`
`
`
`
`
`
`
`Ascenda Law Group, PC
`333 W San Carlos St., Suite 200
`San Jose, CA 95110
`Tel: 866-877-4883
`Email: patents@ascendalaw.com
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
