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Case No. IPR2016-00249
`Joint Motion To Terminate
`
`Filed on behalf of Petitioners
`By:
`Joseph J. Richetti
`Kevin E. Paganini
`Bryan Cave LLP
`1290 Avenue of the Americas
`New York, NY 10104
`Tel: (212) 541-2000
`Fax: (212) 541-4630
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`HYUNDAI MOTOR AMERICA, INC., HYUNDAI MOTOR COMPANY,
`KIA MOTORS CORPORATION & KIA MOTORS AMERICA, INC.
`Petitioners
`
`v.
`
`PAICE LLC &
`ABELL FOUNDATION, INC.
`Patent Owners
`
`Case: IPR2016-00249
`U.S. Patent No. 7,237,634
`
`JOINT MOTION TO TERMINATE PROCEEDING
`PURSUANT TO 35 U.S.C. § 317 AND 37 C.F.R. § 42.74
`
`

`
`Case No. IPR2016-00249
`Joint Motion To Terminate
`
`Pursuant
`
`to 35 U.S.C. § 317(a), Petitioners and Patent Owners jointly
`
`request termination of inter partes review (IPR) no. IPR2016-00249, which is
`
`directed to U.S. Patent No. 7,237,634. The parties are also separately filing
`
`motions to terminate IPR2016-00246, 00247, 00248 and 00251, which are also
`
`directed to U.S. Patent No. 7,237,634, as well as IPR2016-00272 and 00250, which
`
`are directed to U.S. Patent Nos. 7,104,347 and 8,214,097, respectively.1
`
`Termination of this proceeding is appropriate as the parties have settled their
`
`dispute and have reached an agreement to terminate all of the above-identified
`
`inter partes review proceedings. The parties have entered into a written Settlement
`
`Agreement, a true copy of which has been submitted as Exhibit No. 1943. The
`
`parties desire and jointly request that this Settlement Agreement be treated as
`
`confidential business information and that it be kept separate from the files of the
`
`challenged patents and the above-identified IPRs in accordance with 35 U.S.C. §
`
`317(b) and 37 C.F.R. § 42.74(c). The parties are separately filing joint requests to
`
`this effect.
`
`1 The petitions for all of the identified proceedings were accompanied by
`
`joinder motions. The parties respectfully request that the Board dismiss these
`
`joinder motions as moot.
`
`

`
`Case No. IPR2016-00249
`Joint Motion To Terminate
`
`The applicable statute, 35 U.S.C. § 317(a), provides that an inter partes
`
`review proceeding “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 this
`
`case, the Board has not yet rendered decisions regarding whether trial will be
`
`instituted. Thus, the Board has not yet reached any decision on the merits of the
`
`proceeding. Termination at this early juncture promotes efficiency, conserves
`
`Board resources and minimizes unnecessary costs.
`
`On December 14, 2015, the parties advised the Board that they have reached
`
`a settlement, and sought authorization to file a joint motion to terminate the
`
`proceeding. The Board authorized the filing of a joint motion to terminate this
`
`proceeding on December 15, 2015. Per the Board’s December 15, 2015 email, the
`
`parties understood that they were also to file separate papers requesting that the
`
`Settlement Agreement be treated as business confidential information as specified
`
`in 37 C.F.R. § 42.74(c) and that the Settlement Agreement was to be filed in PRPS
`
`under the designation of “Parties and Board Only.”
`
`In view of the foregoing, the parties jointly and respectfully request that the
`
`instant proceeding be terminated and that motion for joinder with IPR2015-
`
`00800 be dismissed as moot.
`
`2
`
`

`
`Date: December 22, 2015
`
`Respectfully submitted,
`
`Case No. IPR2016-00249
`Joint Motion To Terminate
`
`By: /Joseph J. Richetti, Reg. No. 47024/
`Joseph J. Richetti (Reg. No. 47,024)
`Kevin Paganini (Reg. No. 66,286)
`BRYAN CAVE LLP
`1290 Avenue of the Americas
`New York, NY 10104
`General Tel: (212) 541-2000
`Fax: (212) 541-4630
`Email: joe.richetti@bryancave.com,
`kevin.paganini@bryancave.com
`
`Attorneys for Petitioners – Hyundai Motor
`America, Inc., Hyundai Motor Company, Kia
`Motors Corporation & Kia Motors America,
`Inc.
`
`3
`
`

`
`Case No. IPR2016-00249
`Joint Motion To Terminate
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that the foregoing JOINT MOTION TO
`
`TERMINATE PROCEEDING PURSUANT TO 35 U.S.C. § 317 was served
`
`electronically via e-mail on December 22, 2015, in its entirety on the following:
`
`Attorneys for Patent Owners:
`
`Timothy W. Riffe
`Kevin E. Greene
`Ruffin B. Cordell
`Linda L. Kordziel
`Brian J. Livedalen
`FISH & RICHARDSON P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`
`Attorneys for Petitioner in IPR2015-00800:
`
`Frank A. Angileri
`John E. Nemazi
`John P. Rondini
`Michael N. MacCallum
`BROOKS KUSHMAN P.C.
`1000 Town Center, 22nd Floor
`Southfield, MI 48075
`
`Lissi Mojica
`Kevin Greenleaf
`DENTONS US LLP
`233 South Wacker Drive
`Suite 7800
`Chicago, IL 60606-6306
`
`

`
`Case No. IPR2016-00249
`Joint Motion To Terminate
`
`Date: December 22, 2015
`
`Respectfully submitted,
`
`By: /Joseph J. Richetti, Reg. No. 47024/
`Joseph J. Richetti (Reg. No. 47,024)
`Lead Attorney for Patent Owner
`BRYAN CAVE LLP
`1290 Avenue of the Americas
`New York, NY 10104
`General Tel: (212) 541-2000
`Direct Tel: (212) 541-1092
`Fax: (212) 541-4630
`Email: joe.richetti@bryancave.com
`
`Attorney for Petitioners – Hyundai Motor
`America, Inc., Hyundai Motor Company,
`Kia Motors Corporation & Kia Motors
`America, Inc.
`
`2

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