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`IPR2016-00418
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`PATENT NO. 8,155,342
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________________________________________
`
`TOYOTA MOTOR CORPORATION, HYUNDAI MOTOR COMPANY LTD.,
`HYUNDAI MOTOR AMERICA, HYUNDAI MOTOR MANUFACTURING
`ALABAMA, LLC, KIA MOTORS CORPORATION, KIA MOTORS AMERICA,
`INC., KIA MOTORS MANUFACTURING GEORGIA, INC., NISSAN NORTH
`AMERICA, INC., NISSAN MOTOR CO., LTD., and AMERICAN HONDA
`MOTOR CO., INC.,
`Petitioner
`v.
`
`BLITZSAFE TEXAS, LLC
`Patent Owner
`
`Patent No. 8,155,342
`Issue Date: April 10, 2012
`Title: MULTIMEDIA DEVICE INTEGRATION SYSTEM
`__________________________________________________________________
`AMERICAN HONDA MOTOR CO., INC. AND BLITZSAFE TEXAS,
`LLC’S JOINT MOTION TO TERMINATE PROCEEDING PURSUANT TO
`35 U.S.C. § 317 AND 37 C.F.R. § 42.74
`
`Case No. IPR2016-004181
`__________________________________________________________________
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`
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`1 Cases IPR2016-01533, IPR2016-01557, and IPR2016-01560 have been joined
`with this proceeding.
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`IPR2016-00418
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`PATENT NO. 8,155,342
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`Pursuant to 35 U.S.C. § 317, 37 C.F.R. § 42.74, and the email from the
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`Patent Trial and Appeal Board on February 8, 2017, authorizing filing of the
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`present motion, Petitioner American Honda Motor Co., Inc., and Patent Owner
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`Blitzsafe Texas, LLC (the “Parties”) jointly request termination of the inter partes
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`review of U.S. Patent No. 8,155,342, Case No. IPR2016-00418, without prejudice
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`to either Party.
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`1. Termination as to the Patent Owner and Petitioner is Appropriate
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`The Parties have settled their dispute and have agreed to request termination
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`of this inter partes review proceeding. More specifically, the Parties have settled
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`their related district court litigation and have filed an agreed motion to dismiss the
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`litigation (Blitzsafe Texas, LLC v. Honda Motor Co., Ltd. et al., Civ. A. No. 2:15-
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`cv-01274-JRG-RSP (E.D. Tex.) (Motion to dismiss to be filed concurrently with
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`this motion)).
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`Toyota was the original filer of IPR2016-00418, and joinder was granted as
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`to American Honda Motor Co., Inc. (IPR2016-01533); the Hyundai/Kia entities
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`(IPR2016-01557); and the Nissan entities (IPR2016-01560). Toyota and
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`Hyundai/Kia have already filed joint motions with Blitzsafe to Terminate the
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`proceeding (Paper Nos. 38 and 40 respectively). The Board granted Termination
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`as to Toyota and as to Hyundai/Kia in Paper Nos. 42 and 43 respectively. Nissan
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`submitted a joint request with Patent Owner to terminate the proceeding and the
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`IPR2016-00418
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`PATENT NO. 8,155,342
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`Board authorized the filing of that motion on February 2, 2017. Nissan further
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`indicated in an email to the Board that it would file its motion to Terminate by
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`March 10, 2017. Patent Owner expects that Nissan will file its motion to terminate
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`within the coming days, at which point Patent Owner seeks termination of the
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`proceeding.
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`2. Treatment of Settlement Agreement as Business Confidential
`Information
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`Pursuant to 37 C.F.R. § 42.74(c), the Parties’ settlement agreement has been
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`made in writing and a true and correct copy of the settlement agreement is being
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`filed concurrently with the present motion as Exhibit 2016.
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`The Parties hereby jointly request that the settlement agreement be treated as
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`business confidential information and be kept separate from the files of the above
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`captioned IPR pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
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`3. Conclusion
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`For the foregoing reasons, the Parties jointly and respectfully request
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`termination of the present proceeding, Case No. IPR2016-00418, without prejudice
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`to either Party.
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`Dated March 2, 2017
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`Alfred R. Fabricant
`Admitted Pro Hac Vice
`Backup Counsel for Patent Owner
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`/s/Peter Lambrianakos /
`
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`Peter Lambrianakos (Reg. No. 58,279)
`Lead Counsel for Patent Owner
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`Brown Rudnick LLP
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`Brown Rudnick LLP
`7 Times Square
`New York, NY 10036
`Tel: 212-209-4800
`Fax: 212-209-4801
`Email: afabricant@brownrudnick.com
`
`EXHIBIT LIST
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`
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`IPR2016-00418
`
`PATENT NO. 8,155,342
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`
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`7 Times Square
`New York, NY 10036
`Tel: 212-209-4800
`Fax: 212-209-4801
`Email: plambrianakos@brownrudnick.com
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`Exhibit
`2016
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`Description
`Settlement Agreement (Blitzsafe - Honda)
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`IPR2016-00418
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`PATENT NO. 8,155,342
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`CERTIFICATE OF SERVICE UNDER 37 C.F.R. § 42.6(e)(4) & 42.105(b)
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`A copy of American Honda Motor Co., Inc. and Blitzsafe Texas, LLC’s
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`Joint Motion to Terminate Proceeding Pursuant to 35 U.S.C. § 317 and 37 C.F.R. §
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`42.74 and Exhibit 2016 were served on Petitioner at the correspondence of the
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`Petitioner as follows:
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`
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`Joseph Melnik
`Reg. No. 48,741
`jmelnik@jonesday.com
`JONES DAY
`1755 Embarcadero Road
`Palo Alto, California 94303
`Telephone: (650) 739-3939
`Facsimile: (650) 739-3939
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`March 2 2017
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`By:
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`Joseph M. Beauchamp
`Reg. No. 46,544
`jbeauchamp@jonesday.com
`H. Albert Liou
`Reg. No. 71,504
`aliou@jonesday.com
`JONES DAY
`717 Texas Avenue, Suite 3300
`Houston, Texas 77002
`Telephone: (832) 239-3939 Facsimile:
`(832) 239-3600
`
` /Peter Lambrianakos/
`Peter Lambrianakos (Reg. No. 58,279)
`Lead Counsel for Patent Owner
`Brown Rudnick LLP
`7 Times Square
`New York, NY 10036
`Tel: 212-209-4800
`Fax: 212-209-4801
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