UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`BMW OF NORTH AMERICA, LLC,
`Petitioner
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`v.
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`ADAPTIVE HEADLAMP TECHNOLOGIES, INC.,
`Patent Owner
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`Inter Partes Review No.: IPR2016-00196
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`U.S. Patent No. 7,241,034 C1
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`___________________
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`JOINT MOTION TO TERMINATE PROCEEDING
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`BMW OF NORTH AMERICA, LLC,
`Petitioner
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`v.
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`ADAPTIVE HEADLAMP TECHNOLOGIES, INC.,
`Patent Owner
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`Inter Partes Review No.: IPR2016-00196
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`U.S. Patent No. 7,241,034 C1
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`___________________
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`JOINT MOTION TO TERMINATE PROCEEDING
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`IPR2016-00196
`U.S. Patent No. 7,241,034
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`Exhibit No. Description of Exhibit
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`Joint Motion to Terminate Proceeding
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`Patents and Assignment Information
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`BMW 1001
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`U.S. Patent No. 7,241,034, including Reexamination Certificate
`issued as U.S. Patent No. 7,241,034 C1
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`BMW 1002 USPTO Assignments on the Web for U.S. Patent No. 7,241,034
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`Documents Relating to Prosecution of the ’034 Patent
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`BMW 1003 File History for U.S. Serial No. 10/285,312
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`BMW 1004 File History for Ex Parte Reexamination Proceedings 90/011,011
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`BMW 1005
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`File History for Merged Reexamination Proceedings 90/011,011 &
`95/001,621
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`Expert Declaration
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`BMW 1006
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`Declaration of Dr. John Martens in Support of Inter Partes Review
`of U.S. Patent No. 7,241,034 C1
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`BMW 1007 Curriculum Vitae of Dr. John Martens
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`Prior Art
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`BMW 1008 U.S. Patent No. 6,229,263 (“Izawa”)
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`BMW 1009 U.S. Patent No. 5,868,488 (“Speak”)
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`BMW 1010 Japanese Patent Application Publication H01-223042, September 6,
`1988 (“Uguchi”), with certified English translation
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`BMW 1011 U.S. Patent Application Publication 2001/0012206 (“Hayami”)
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`BMW 1012 Japanese Patent Application No. P2001-277938, October 10, 2001
`(“Nishimura”), with certified English translation
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`BMW 1013 U.S. Patent No. 6,671,640 (“Okuchi”)
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`BMW 1014 UK Published Patent Application GB 2 309 774 A (“Takahashi”)
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`IPR2016-00196
`U.S. Patent No. 7,241,034
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`BMW 1015 U.S. Patent No. 5,562,336 (“Gotou”)
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`Joint Motion to Terminate Proceeding
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`BMW 1016 U.S. Patent No. 5,404,278 (“Shibata”)
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`BMW 1017 French Patent No. 995,205, with machine translation
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`BMW 1018
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`Green, Gavin, “Future Shock: Nothing as otherworldly radical had
`ever touched down on Planet Earth,” Aug. 10, 2006, available at
`http://www.motortrend.com/news/c12-0511-1960-citroen-ds/
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`BMW 1019 U.S. Patent No. 6,547,425
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`Other
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`BMW 1020
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`Adaptive Headlamp Technologies, Inc.’s Disclosure of Asserted
`Claims, served in U.S. District Court for the District of Delaware in
`Case No. 1:14-cv-00962-GMS.
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`BMW 1021 CONFIDENTIAL Settlement Agreement
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`ii
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`IPR2016-00196
`U.S. Patent No. 7,241,034
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`Joint Motion to Terminate Proceeding
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`Pursuant to 35 U.S.C. §317(a), Petitioner BMW of North America, LLC
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`(“Petitioner”) and Patent Owner Adaptive Headlamp Technologies, Inc. (“Patent
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`Owner”) jointly request termination of this inter partes review of U.S. Patent No.
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`7,241,034 (“the ʼ034 patent”).
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`Termination is appropriate because the parties have entered into a settlement
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`agreement that resolves all underlying disputes between the parties with respect to
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`the ʼ034 patent, including the present inter partes review proceeding IPR2016-
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`00196. The petition for review was filed on November 16, 2015. The Board has
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`not entered a decision regarding institution. “Generally the Board expects that a
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`proceeding will terminate after the filing of a settlement agreement.” Oracle Corp.
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`v. Cmty. United IP, LLC, CBM2013-00015, Paper 13 (July 25, 2013) (citing Office
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`Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48756-66 (Aug. 14, 2012)).
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`Under 35 U.S.C. § 317(a), an inter partes review “shall be terminated” upon such
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`joint request “unless the Office has decided the merits of the proceeding before the
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`request for termination is filed.” Petitioner and Patent Owner have met this
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`statutory requirement.
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`Pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b), a true copy of the
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`parties’ written
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`settlement agreement
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`is being
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`filed as an exhibit
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`contemporaneously with this joint motion to terminate. (Ex. 1021, Settlement
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`Agreement). The settlement agreement has been filed for access by the “Parties
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`IPR2016-00196
`U.S. Patent No. 7,241,034
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`and Board Only.” The parties desire that the settlement agreement be maintained
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`Joint Motion to Terminate Proceeding
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`as business confidential information under 35 U.S.C. § 317(b) and 37 C.F.R. §
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`42.74(c), and have filed a separate request to that effect. As part of the settlement
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`agreement, the parties have agreed to move for dismissal of the related district
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`court litigation Adaptive Headlamp Technologies, Inc. v. BMW of North America,
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`LLC, No. 1:14-cv-00962 (D. Del.).
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`Petitioner and Patent Owner are aware of three additional pending petitions
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`for inter partes review of the ’034 Patent, including IPR2016-00079, IPR2016-
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`00193, and IPR2016-00501, requested by Koito Manufacturing Co., Ltd., SL
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`Corporation, and Mercedes-Benz USA LLC, respectively. None of the pending
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`inter partes reexaminations has been instituted.
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`Petitioner and Patent Owner understand that the ’034 patent has been
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`asserted in other district court litigations where Petitioner is not a named party.
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`The filing of this joint motion was authorized by the Board in an e-mail
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`communication on April 5, 2016.
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`For the foregoing reasons, Petitioner and Patent Owner jointly and
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`respectfully request that the Board terminate this proceeding in its entirety.
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`IPR2016-00196
`U.S. Patent No. 7,241,034
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`Date: April 6, 2016
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`Date: April 6, 2016
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`Joint Motion to Terminate Proceeding
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`Respectfully submitted,
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`/Jeffrey D. Sanok/
`Jeffrey D. Sanok, Reg. No. 32169
`Jonathan M. Lindsay, Reg. No. 45810
`Crowell & Moring LLP
`1001 Pennsylvania Avenue NW
`Washington, DC 20004-2595
`Tel.: (202) 624-2500
`Fax.: (202) 628-5116
`jsanok@crowell.com
`jlindsay@crowell.com
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`Counsel for Petitioner
`BMW of North America, LLC
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`/Brett M. Pinkus/
`Brett M. Pinkus, Reg. No. 59980
`Friedman, Suder & Cooke
`604 E. Fourth Street, Suite 200
`Fort Worth, TX 76102
`Tel.: (817) 334-0400
`Fax.: (817) 334-0401
`pinkus@fsclaw.com
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`Counsel for Patent Owner
`Adaptive Headlamp Technologies,
`Inc.
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`IPR2016-00196
`U.S. Patent No. 7,241,034
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`Joint Motion to Terminate Proceeding
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that, on this 6th day of April 2016, a true and
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`correct copy of the foregoing JOINT MOTION TO TERMINATE PROCEEDING,
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`together with Exhibit 1021, was served by Petitioner via e-mail on the attorney of
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`record for the Patent Owner, who is also Patent Owner’s attorney of record in the
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`co-pending litigation, at the following address:
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`Attorney of Record
`for Patent Owner:
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`Brett M. Pinkus, Reg. No. 59980
`Friedman, Suder & Cooke
`604 E. Fourth Street, Suite 200
`Fort Worth, TX 76102
`Tel.: (817) 334-0400
`Fax.: (817) 334-0401
`pinkus@fsclaw.com
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`/Jonathan Lindsay /
`Jonathan M. Lindsay, Reg. No. 45810
`CROWELL & MORING LLP
`1001 Pennsylvania Avenue NW
`Washington, DC 20004-2595
`Tel.: (949) 263-8400
`Fax.: (949) 263-8414
`JLindsay@crowell.com
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`4
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