`Entered: May 31, 2016
`
`Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`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.,
`Petitioner,
`
`v.
`
`SIGNAL IP, INC.,
`Patent Owner.
`_______________
`
`Case IPR2015-010041
`Patent 6,012,007
`_______________
`
`
`
`Before MEREDITH C. PETRAVICK, JEREMY M. PLENZLER, and
`JAMES A. TARTAL, Administrative Patent Judges.
`
`
`PLENZLER, Administrative Patent Judge.
`
`
`DECISION
`Joint Motion to Terminate with Respect to
`Petitioner Nissan North America, Inc.
`35 U.S.C. § 317(a)
`
`
`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. On April 12, 2016, this proceeding was
`terminated with respect to American Honda Motor Co., Inc. Paper 21.
`
`
`
`IPR2015-01004
`Patent 6,012,007
`
`
`On May 23, 2016, Petitioner Nissan North America, Inc. (“Nissan”)
`and Patent Owner filed a joint motion to terminate this proceeding with
`respect to Petitioner Nissan under 35 U.S.C. § 317(a). Paper 24 (“Mot.”).
`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.” In
`their joint motion, the parties request termination of this proceeding because
`“Petitioner Nissan and Patent Owner Signal IP have entered into a written
`settlement agreement.” Mot. 1. The merits of this proceeding have not been
`decided.
`Under 35 U.S.C. § 317(b), any agreement or understanding between
`Patent Owner and Petitioner, including any collateral agreements referred to
`in such agreement or understanding, made in connection with, or in
`contemplation of, the termination of the proceeding shall be in writing, and a
`true copy of such agreement or understanding shall be filed in the Office.
`The parties represent that “[a] true and correct copy of the settlement
`agreement is being filed herewith as Exhibit 2002, pursuant to 35 U.S.C.
`§ 317(b) and 37 C.F.R. § 42.74(b).” Id. at 1–2. The parties request to treat
`the settlement agreement as business confidential information under
`35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). Paper 25.
`Upon consideration of the facts in the case before us, we grant the
`joint motion and terminate this proceeding with respect to Petitioner Nissan
`and the request to treat the settlement agreement business confidential. The
`proceeding is not terminated with respect to Kia Motors America, Inc.
`
`
`2
`
`
`
`IPR2015-01004
`Patent 6,012,007
`
`
`It is
`ORDERED that the joint motion to terminate this proceeding with
`respect to Petitioner Nissan is granted; and
`FURTHER ORDERED that the parties’ request to treat the settlement
`agreement (Ex. 2002) as business confidential information under 35 U.S.C.
`§ 317(b) and 37 C.F.R. § 42.74(c) is granted.
`
`3
`
`
`
`PETITIONER:
`Tawni L. Wilhelm
`twilhelm@shb.com
`Richard Eiszner
`reiszner@shb.com
`
`PATENT OWNER:
`Tarek N. Fahmi
`tarek.fahmi@ascendalaw.com
`Holly J. Atkinson
`holly.atkinson@ascendalaw.com
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