`Tel: 571-272-7822
`
`
`
`
`
`Paper 13
`Date: February 8, 2023
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`VOLKSWAGEN GROUP OF AMERICA, INC., HYUNDAI MOTOR
`AMERICA, and SUBARU OF AMERICA, INC., 1
`Petitioner,
`
`v.
`
`STRATOSAUDIO, INC.,
`Patent Owner.
`____________
`
`IPR2021-00720 (Patent 9,355,405 B2)
`IPR2021-00721 (Patent 8,166,081 B2)
`____________
`
`Before JUSTIN T. ARBES, HYUN J. JUNG, and KEVIN C. TROCK,
`Administrative Patent Judges.
`
`TROCK, Administrative Patent Judge.
`
`
`ORDER
`Settlement as to Subaru of America, Inc.
`35 U.S.C. § 317; 37 C.F.R. § 42.74
`
`
`
`
`
`
`
`
`1 Subaru of America, Inc. filed a motion for joinder and a petition in Case
`IPR2022-00203, and Hyundai Motor America and Subaru of America, Inc.
`filed a motion for joinder and a petition in Case IPR2022-00224, which were
`granted, and, therefore, have been joined as petitioners in these proceedings.
`
`
`
`IPR2021-00720 (Patent 9,355,405 B2)
`IPR2021-00721 (Patent 8,166,081 B2)
`
`
`Petitioner Subaru of America, Inc. (“Subaru”) and Patent Owner
`StratosAudio, Inc. filed, in each of the instant proceedings, a Joint Motion to
`Terminate on the basis of a settlement reached by Subaru and Patent Owner.
`See Paper 57 (“Mot.”); 35 U.S.C. § 317(a); 37 C.F.R. §§ 42.72, 42.74. The
`parties also filed a copy of their written settlement agreement (Exhibit 2026)
`as “Board Only” in the Board’s electronic filing system and filed a Joint
`Request (Paper 58) that the agreement be treated as business confidential
`information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). 2
`Subaru and Patent Owner represent that a settlement agreement
`between the two parties “has been made in writing, and a true copy of the
`same is [filed] as Exhibit 2026” and “[t]here are no other collateral
`agreements between the Parties made in connection with, or in
`contemplation of, the termination sought.” Mot. 2. The Motion does not
`indicate that Subaru is a defendant in any pending district court litigation
`asserting the challenged patents. Id. at 2–3. Under these circumstances, we
`determine that it is appropriate to terminate the instant proceedings with
`respect to Subaru. See 37 C.F.R. §§ 42.72, 42.74. The proceedings shall
`continue with respect to Volkswagen Group of America, Inc. and Hyundai
`Motor America (in Case IPR2021-00720) (collectively, “Petitioner”), under
`the terms set forth in our decision granting the motion for joinder in each
`proceeding. See IPR2021-00720, Paper 39; IPR2021-00721, Paper 37.
`In consideration of the foregoing, it is hereby
`
`
`2 The parties filed similar documents in each of the instant proceedings. See
`IPR2021-00720, Papers 57, 58, Ex. 2026; IPR2021-00721, Papers 58, 59,
`Ex. 2026. We refer to those papers filed in Case IPR2021-00720 for
`convenience.
`
`2
`
`
`
`IPR2021-00720 (Patent 9,355,405 B2)
`IPR2021-00721 (Patent 8,166,081 B2)
`
`
`ORDERED that the parties’ requests that the settlement agreement
`(Exhibit 2026) between Subaru and Patent Owner be treated as business
`confidential information, kept separate from the files of U.S. Patent
`Nos. 9,355,405 B2 and 8,166,081 B2, and made available only to Federal
`Government agencies on written request, or to any person on a showing of
`good cause, under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), are granted;
`FURTHER ORDERED that the Joint Motion to Terminate as to
`Subaru in each of the instant proceedings is granted; and
`FURTHER ORDERED that for all future filings, the case caption in
`the instant proceedings shall be changed to remove SUBARU OF
`AMERICA, INC.
`
`3
`
`
`
`IPR2021-00720 (Patent 9,355,405 B2)
`IPR2021-00721 (Patent 8,166,081 B2)
`
`FOR PETITIONER VOLKSWAGEN GROUP OF AMERICA, INC.:
`
`Michael D. Specht
`Ryan C. Richardson
`Daniel S. Block
`Daniel E. Yonan
`Timothy L. Tang
`Wenhao Xiong
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C
`mspecht-ptab@sternekessler.com
`rrichardson-ptab@sternekessler.com
`dblock-ptab@sternekessler.com
`dyonan-ptab@sternekessler.com
`
`FOR PETITIONERS HYUNDAI MOTOR AMERICA, and SUBARU OF
`AMERICA, INC.:
`
`Matthew D. Satchwell
`Paul R. Steadman
`DLA PIPER LLP (US)
`matthew.satchwell@dlapiper.com
`paul.steadman@dlapiper.com
`
`Lewis E. Hudnell, III
`Nicolas S. Gikkas
`HUDNELL LAW GROUP P.C.
`lewis@hudnelllaw.com
`nsg@gikkaslaw.com
`
`FOR PATENT OWNER:
`
`John Scheibeler
`Jonathan Lamberson
`Ashley T. Brzezinski
`WHITE & CASE LLP
`jscheibeler@whitecase.com
`jonathan.lamberson@whitecase.com
`ashley.brzezinski@whitecase.com
`
`4
`
`
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