`Patent No. 8,688,028
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
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`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`VOLKSWAGEN GROUP OF AMERICA, INC., MAZDA MOTOR OF
`AMERICA, INC., SUBARU OF AMERICA, INC.,
`and VOLVO CAR USA, LLC,
`Petitioners
`
`v.
`
`STRATOSAUDIO, INC.,
`Patent Owner
`
`
`
`
`
`
`
`
`Case IPR2021-00716
`Patent No. 8,688,028
`
`
`
`
`
`
`
`
`JOINT MOTION TO TERMINATE PROCEEDING WITH RESPECT TO
`MAZDA MOTOR OF AMERICA, INC.
`PURSUANT TO 35 U.S.C. § 317
`
`
`
`
`
`
`
`IPR2021-00716
`Patent No. 8,688,028
`Pursuant to 35 U.S.C. § 317(a), Mazda Motor of America, Inc. (“Mazda”)
`
`and StratosAudio, Inc. (“Patent Owner”) jointly request termination of Mazda’s
`
`involvement in IPR2021-00716, which is directed to U.S. Patent No. 8,688,028
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`(the “’028 Patent”). Mazda and Patent Owner note that the grant of this motion
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`will not result in the termination of this inter partes review because Petitioners
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`Volkswagen Group of America, Inc., Subaru of America, Inc. and Volvo Car
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`USA, LLC are not requesting termination of this inter partes review. The parties
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`were authorized to file this Joint Motion by the Board (via email) on June 9,
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`2022.
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`A settlement agreement between Mazda and Patent Owner has been made
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`in writing, and a true copy of the same is attached as Exhibit 2024. There are no
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`other collateral agreements between the parties made in connection with, or in
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`contemplation of, the termination sought. The parties desire that the settlement
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`agreement be maintained as business confidential information (including with
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`respect to other entities constituting Petitioner) under 37 C.F.R. § 42.74(c) and a
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`separate joint request to that effect is being filed herewith.
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`The ’028 Patent is asserted in the following pending litigations:
`
`Caption
`
`Case No.
`
`Defendant
`
`Status
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`StratosAudio, Inc. v.
`Subaru of America, Inc.
`
`6:20-cv-1128
`(WDTX)
`
`Subaru of
`America, Inc.
`
`Pending
`
`
`
`2
`
`
`
`IPR2021-00716
`Patent No. 8,688,028
`Volvo Cars USA,
`Pending
`LLC
`
`6:20-cv-1129
`(WDTX)
`
`2:22-cv-1712
`(CDCA)
`
`Hyundai Motor
`of America
`
`Pending
`
`StratosAudio, Inc. v.
`Volvo Cars of North
`America, LLC et al.
`StratosAudio, Inc. v.
`Hyundai Motor
`America
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`In accordance with 35 U.S.C. § 317(a), because Patent Owner and Mazda
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`jointly request this termination as to Mazda’s involvement in this inter partes
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`review, no estoppel under 35 U.S.C. § 315(e) shall attach to Mazda.
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`Mazda will not further participate in these proceedings.
`
`Respectfully submitted,
`
`/Matthew D. Satchwell/
`Matthew D. Satchwell (Reg. No.
`58,870)
`DLA Piper LLP (US)
`444 West Lake Street, Suite 900
`Chicago, Illinois 60606
`Telephone: (312) 368-2111
`Fax: (312) 236-7516
`matthew.satchwell@dlapiper.com
`
`Respectfully submitted,
`
`
`/John Scheibeler/
`John Scheibeler (Reg. No. 35,346)
`WHITE & CASE LLP
`1221 Avenue of the Americas
`New York, NY 10020-1095
`Phone: (212) 819-8200
`
`Jonathan Lamberson (Reg. No. 57,352)
`WHITE & CASE LLP
`2 Palo Alto Square, Suite 900
`3000 El Camino Real
`Palo Alto, CA 94306-2109
`Phone: (650) 213-0384
`
`Ashley T. Brzezinski (Reg. No.
`68,651)
`WHITE & CASE LLP
`75 State Street
`Boston, MA 02109
`Phone: (617) 979-9344
`
`Attorneys for Patent Owner,
`StratosAudio, Inc.
`
`
`
`3
`
`
`
`IPR2021-00716
`Patent No. 8,688,028
`
`
`
`CERTIFICATE OF SERVICE
`The undersigned certifies that a copy of the foregoing was served on July 21,
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`2022, by delivering a copy by email to the attorneys of record for the Petitioner
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`Mazda Motor of America, Inc. at the following email addresses:
`
`JOINT MOTION TO TERMINATE PROCEEDING
`WITH RESPECT TO MAZA MOTOR OF
`AMERICA, INC. PURSUANT TO
`35 U.S.C. § 317
`
`Matthew D. Satchwell (Reg. No. 58,870)
`Paul R. Steadman (Reg. No. 43,932)
`DLA Piper LLP (US)
`444 West Lake Street, Suite 900
`Chicago, Illinois 60606
` (312) 368-2111
`matthew.satchwell@dlapiper.com
` paul.steadman@dlapiper.com
`
`Lewis E. Hudnell, III (Reg. No. 51,185)
`Nicolas S. Gikkas (Reg. No. 46,245)
`Hudnell Law Group P.C.
`800 W. El Camino Real Suite 180
`Mountain View, California 94040
`650 564-7720
`lewis@hudnelllaw.com
` nick@hudnelllaw.com
`
`
`
`
`Respectfully submitted,
`
`/John Scheibeler/ (Electronically signed)
`John Scheibeler
`Reg. No. 35,346
`
`
`4
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