`Patent No. 8,688,028
`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., MAZDA MOTOR OF
`AMERICA, INC., SUBARU OF AMERICA, INC.,
`and VOLVO CAR USA, LLC,
`Petitioners
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`v.
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`STRATOSAUDIO, INC.,
`Patent Owner
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`Case IPR2021-00716
`Patent No. 8,688,028
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`JOINT REQUEST TO MAINTAIN CONFIDENTIALITY AND TO KEEP
`SEPARATE PURSUANT TO 35 U.S.C. § 327(b) and 37 C.F.R. § 42.74
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`
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`IPR2021-00716
`Patent No. 8,688,028
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`I.
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`INTRODUCTION
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`Petitioner Mazda Motor of America, Inc. (“Mazda”) and StratosAudio, Inc.
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`(“Patent Owner”) (collectively, the “Parties”) have resolved Patent Owner’s
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`claims for relief against Mazda and executed a settlement agreement regarding
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`U.S. Patent No. 8,688,028 (the “’028 Patent”). Pursuant to 35 U.S.C. § 327(b),
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`the Parties jointly request that the Board treat the settlement agreement as
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`business confidential information and keep it separate from the file of the
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`involved patent.
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`II.
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`STATEMENT OF PRECISE RELIEF REQUESTED
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`The Parties jointly request that the Board treat the settlement agreement
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`(Exhibit 2024) as business confidential information and keep it separate from the
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`file of the involved patent. There are no other collateral agreements between the
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`parties made in connection with, or in contemplation of, the termination sought.
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`The parties request that the Agreement “be made available only to Federal
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`Government agencies on written request, or to any person on a showing of good
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`cause” in accordance with 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74. The Parties
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`further request the Board to not make the settlement agreement available to any
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`third-party (including entities constituting Petitioner other than Mazda), except as
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`provided for in 35 U.S.C. § 327(b) and 37 C.F.R. § 42.74. The parties were
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`authorized to file this Joint Request by the Board (via email) on June 9, 2022.
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`IPR2021-00716
`Patent No. 8,688,028
`III. STATEMENT OF REASONS FOR THE RELIEF REQUESTED
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`The Parties have executed a settlement agreement regarding their dispute
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`relating to the ’028 Patent. The settlement agreement describes the terms of the
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`parties’ agreement, which constitutes confidential commercial information under
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`the Board’s rule. See 37 C.F.R. § 42.54; Office Patent Trial Practice Guide, 77 Fed.
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`Reg. 48,756, 48,760 (Aug. 14, 2012). The settlement agreement also provides that
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`the terms of the settlement agreement are confidential and the Parties have treated
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`them as such. The Parties are filing, concurrently herewith, a true and correct copy
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`of the settlement agreement with the Board as Exhibit 2024, as required by 35
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`U.S.C. § 327(b) and 37 C.F.R. § 42.74. This Exhibit was filed in the PRPS system
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`to provide availability to “Board Only.” The Parties jointly request that the
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`settlement agreement be treated as business confidential information and be kept
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`separate from the file of the involved patent, pursuant to 35 U.S.C. § 327(b) and 37
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`C.F.R. § 42.74(c).
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`Respectfully submitted,
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`/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
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`Jonathan Lamberson (Reg. No. 57,352)
`WHITE & CASE LLP
`2 Palo Alto Square, Suite 900
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`Respectfully submitted,
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`/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
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`IPR2021-00716
`Patent No. 8,688,028
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`3000 El Camino Real
`Palo Alto, CA 94306-2109
`Phone: (650) 213-0384
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`Ashley T. Brzezinski (Reg. No.
`68,651)
`WHITE & CASE LLP
`75 State Street
`Boston, MA 02109
`Phone: (617) 979-9344
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`Attorneys for Patent Owner,
`StratosAudio, Inc.
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`IPR2021-00716
`Patent No. 8,688,028
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`CERTIFICATE OF SERVICE
`The undersigned certifies that a copy of the foregoing
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`JOINT REQUEST TO MAINTAIN
`CONFIDENTIALITY AND TO KEEP SEPARATE
`PURSUANT TO 35 U.S.C. § 327(b) and
`37 C.F.R. § 42.74
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`was served on July 21, 2022, by delivering a copy by email to the attorneys of
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`record for the Petitioner Mazda Motor of America, Inc. at the following email
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`addresses:
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`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
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`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
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`Respectfully submitted,
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`/John Scheibeler/ (Electronically signed)
`John Scheibeler
`Reg. No. 35,346
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