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`IPR2016-01445
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`PATENT NO. 8,155,342
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________________________________________
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`VOLKSWAGEN GROUP OF AMERICA, INC.
`Petitioner
`v.
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`BLITZSAFE TEXAS, LLC
`Patent Owner
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`Patent No. 8,155,342
`Issue Date: April 10, 2012
`Title: MULTIMEDIA DEVICE INTEGRATION SYSTEM
`__________________________________________________________________
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`VOLKSWAGEN GROUP OF AMERICA, 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
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`Case No. IPR2016-01445
`__________________________________________________________________
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`IPR2016-01445
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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 conference call
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`between the Petitioner, Patent Owner, and Patent and Trial and Appeal Board on
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`January 26, 2017, authorizing filing of the present motion, Petitioner Volkswagen
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`Group of America, Inc. and Patent Owner Blitzsafe Texas, LLC (the “Parties”)
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`jointly request termination of the inter partes review of U.S. Patent No. 8,155,342,
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`Case No. IPR2016-01445, 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 inter partes review has not been instituted and the Parties have settled
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`their dispute and have agreed to request termination of this inter partes review
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`proceeding. More specifically, the Parties have settled and dismissed their related
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`district court litigation (Blitzsafe Texas, LLC v. Volkswagen Group of America,
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`Inc. et al., Civ. A. No. 2:15-cv-01278-JRG-RSP (E.D. Tex.) (Dismissed on
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`January 26, 2017)) and have also agreed to jointly request termination of this
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`proceeding and related inter partes review of U.S. Patent No. 8,155,342, Case No.
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`IPR2016-01449.
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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(b), 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 2004.
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`IPR2016-01445
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`PATENT NO. 8,155,342
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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. IPR2016-01445, without prejudice
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`to either Party.
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`Dated January 27, 2017
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`Respectfully submitted,
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` /Peter Lambrianakos/
`By:
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`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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`IPR2016-01445
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`PATENT NO. 8,155,342
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`PATENT OWNER’S UPDATED EXHIBIT LIST
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`Exhibit #
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`Exhibit Name
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`2001
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`2002
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`2003
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`2004
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`U.S. Pat. App. No. 11/071,667 Published as U.S. Pat. App. Pub.
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`No. 2005/0239434
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`IPR2016-00418 Decision
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`IPR2016-00419 Decision
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`Settlement Agreement (Parties and Board Only)
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`IPR2016-01445
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`PATENT NO. 8,155,342
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`CERTIFICATE OF SERVICE
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`The foregoing Volkswagen Group of America, Inc. and Blitzsafe Texas,
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`LLC’s Joint Motion to Terminate Proceeding Pursuant to 35 U.S.C. § 317 and 37
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`C.F.R. § 42.74 and Exhibit 2004 were served on January 27, 2017 upon the
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`following:
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`Michael J. Lennon
`Kenyon and Kenyon
`One Broadway
`New York, NY 10004
`mlennon@kenyon.com
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`Clifford A. Ulrich
`Kenyon and Kenyon
`One Broadway
`New York, NY 10004
`culrich@kenyon.com
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`January 27, 2017
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`By:
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` /s/ Peter Lambrianakos/
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`
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`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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` \
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