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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
`__________________________________________________________________
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`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.
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`BLITZSAFE TEXAS, LLC
`Patent Owner
`
`Patent No. 8,155,342
`Issue Date: April 10, 2012
`Title: MULTIMEDIA DEVICE INTEGRATION SYSTEM
`__________________________________________________________________
`NISSAN NORTH AMERICA, INC., NISSAN MOTOR CO., LTD., 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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`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 2, 2017, authorizing filing of the
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`present motion, Petitioner Nissan North America, Inc., Nissan Motor Co., LTD.,
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`and Patent Owner Blitzsafe Texas, LLC (the “Parties”) jointly request termination
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`of the inter partes review of U.S. Patent No. 8,155,342, Case No. IPR2016-00418,
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`without prejudice 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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`and dismissed their related district court litigation (Blitzsafe Texas, LLC v. Nissan
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`Motor Co., Ltd. et al., Civ. A. No. 2:15-cv-01276-JRG-RSP (E.D. Tex.) (Motion
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`to dismiss to be filed concurrently with this motion)).
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`Toyota was the original filer of IPR2016-00418, and joinder was granted as
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`to the Honda entities (IPR2016-01533); the Hyundai/Kia entities (IPR2016-
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`01557); and the Nissan entities (IPR2016-01560). Toyota, Hyundai/Kia, and
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`Honda have already filed joint motions with Blitzsafe to Terminate the proceeding
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`(Paper Nos. 38, 40, and 45 respectively). The Board granted Termination as to
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`Toyota, as to Hyundai/Kia, and as to Honda in Paper Nos. 42, 43, and 46
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`respectively.
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`IPR2016-00418
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`PATENT NO. 8,155,342
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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 2017.
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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 7, 2017
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`Alfred R. Fabricant
`Admitted Pro Hac Vice
`Backup Counsel for Patent Owner
`Brown Rudnick LLP
`7 Times Square
`New York, NY 10036
`Tel: 212-209-4800
`Fax: 212-209-4801
`Email: afabricant@brownrudnick.com
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`/s/Peter Lambrianakos /
`
`
`Peter Lambrianakos (Reg. No. 58,279)
`Lead Counsel for Patent Owner
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`Brown Rudnick LLP
`7 Times Square
`New York, NY 10036
`Tel: 212-209-4800
`Fax: 212-209-4801
`Email: plambrianakos@brownrudnick.com
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`IPR2016-00418
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`PATENT NO. 8,155,342
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`EXHIBIT LIST
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`Exhibit
`2017
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`Description
`Settlement and License Agreement (Blitzsafe - Nissan)
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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 Nissan North America, Inc., Nissan Motor Co., Ltd. and Blitzsafe
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`Texas, LLC’s Joint Motion to Terminate Proceeding Pursuant to 35 U.S.C. § 317
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`and 37 C.F.R. § 42.74 and Exhibit 2017 were served on Petitioner at the
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`correspondence of the Petitioner as follows:
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`
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`Sean N. Hsu
`Janik Vinnakota LLP
`8111 Lyndon B Johnson Fwy #790
`Dallas, Tx 75251
`shsu@jvllp.com
`Phone: 214.888.0219
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`March 7, 2017
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`By:
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`David L. Tarnoff
`Suzanne E. Konrad
`Michael T. Murphy
`Global IP Counselors, LLP
`1233 Twentieth St., NW, Suite 600
`Washington, DC 20036
`dtarnoff@giplaw.com
`Phone: 202.292.2209
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`
` /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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