`Tel: 571-272-7822
`
`
`Paper 16
`Entered: June 1, 2016
`
`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 Kia Motors 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) and
`on May 31, 2016, this proceeding was terminated with respect to Nissan
`North America, Inc. (Paper 28).
`
`
`
`IPR2015-01004
`Patent 6,012,007
`
`
`On May 25, 2016, Petitioner Kia Motors America, Inc. (“Kia”) and
`Patent Owner filed a joint motion to terminate this proceeding under
`35 U.S.C. § 317(a). Paper 26 (“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 Kia and Patent Owner Signal IP have resolved their dispute and
`have entered into a written settlement agreement.” Mot. 2. 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 2003, pursuant to 35 U.S.C.
`§ 317(b) and 37 C.F.R. § 42.74(b).” Id. 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 27.
`Petitioner Kia is the last petitioner remaining in this proceeding.
`Upon consideration of the facts in the case before us, we grant the joint
`motion and terminate this proceeding. We grant the request to treat the
`settlement agreement business confidential.
`
`
`2
`
`
`
`IPR2015-01004
`Patent 6,012,007
`
`
`It is
`ORDERED that the joint motion to terminate this proceeding is
`granted; and
`FURTHER ORDERED that the parties’ request to treat the settlement
`agreement (Ex. 2003) as business confidential information under 35 U.S.C.
`§ 317(b) and 37 C.F.R. § 42.74(c) is granted.
`
`3
`
`
`
`PETITIONER:
`Heath J. Briggs
`briggsh@gtlaw.com
`Patrick J. McCarthy
`mccarthyp@gtlaw.com
`
`PATENT OWNER:
`Tarek N. Fahmi
`tarek.fahmi@ascendalaw.com
`Holly J. Atkinson
`holly.atkinson@ascendalaw.com