`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________
`
`VOLKSWAGEN GROUP OF AMERICA, INC.,
`FORD MOTOR COMPANY, GENERAL MOTORS LLC,
`NISSAN NORTH AMERICA, INC., TESLA, INC., and
`AMERICAN HONDA MOTOR CO., INC.,1
`Petitioner
`v.
`NEO WIRELESS LLC,
`Patent Owner
`_____________________
`
`Case IPR2022-01539
`U.S. Patent No. 10,965,512
`_________________
`
`JOINT MOTION TO TERMINATE INTER PARTES REVIEW WITH
`RESPECT TO PETITIONER VOLKSWAGEN GROUP OF AMERICA,
`INC.
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313
`
`1 Ford Motor Company filed a motion for joinder and a petition in IPR2023-00764,
`and General Motors LLC, Nissan North America, Inc., Tesla, Inc., and American
`Honda Motor Co., Inc., filed their own motion for joinder and petition in IPR2023-
`00961. Both motions were granted, and, therefore, Ford Motor Company, General
`Motors LLC, Nissan North America, Inc., Tesla, Inc., and American Honda Motor
`Co., Inc., have been joined as petitioners in this proceeding.
`
`
`
`Case IPR2022-01539
`U.S. Patent No. 10,965,512
`PETITIONER VOLKSWAGEN GROUP OF AMERICA, INC.’S
`UPDATED EXHIBIT LIST
`
`Exhibit
`No.
`1001
`1002
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`1008
`
`1009
`
`1010
`1011
`1012
`
`1013
`
`1014
`
`1015
`
`1016
`
`Description
`
`U.S. Patent No. 10,965,512 to Li et al. (“’512 patent”)
`
`’512 Patent Prosecution History
`
`Declaration of Dr. Paul Min
`
`International Patent Publication No. WO2004/049618 to Kim et al.
`(“Kim”)
`
`U.S. Patent No. 7,120,395 to Tong et al. (“Tong”)
`
`U.S. Patent Application Pub. No. 2004/0179627 to Ketchum et al.
`(“Ketchum”)
`
`U.S. Patent Application Pub. No. 2002/0163879 to Li et al. (“Li”)
`
`U.S. Patent No. 7,248,559 to Ma et al. (“Ma ’559”)
`
`Tufvesson, et al., Pilot Assisted Channel Estimation For OFDM in
`Mobile Cellular Systems, IEEE 47th Vehicular Technology
`Conference (1997)
`
`U.S. Patent No. 7,826,471 to Wilson et al. (“Wilson”)
`
`U.S. Patent No. 7,664,533 to Logothetis et al. (“Logothetis”)
`
`U.S. Patent No. 7,054,664 to Nagaraj (“Nagaraj”)
`
`International Patent Application No. WO 2004/056022 to Lee et al.
`(“Lee”)
`
`U.S. Patent No. 7,551,546 to Ma (“Ma ’546”)
`
`Anderson, Fixed Broadband Wireless System Design, Wiley (2003)
`(excerpts)
`
`U.S. Patent No. 7,852,746 to Jalali (“Jalali”).
`
`- i -
`
`
`
`Case IPR2022-01539
`U.S. Patent No. 10,965,512
`
`Exhibit
`No.
`
`Description
`
`1017
`
`1018
`
`1019
`
`1020
`
`1021
`
`1022
`
`1023
`
`1024
`
`1025
`1026
`1027
`
`1028
`
`1029
`
`1030
`
`U.S. Patent Application Pub. No. 2004/0131007 to Smee et al.
`(“Smee”)
`
`U.S. Patent No. 7,650,152 to Li et al. (“Li ’152”).
`
`U.S. Patent Application Pub. No. 2004/0190598 to Seki et al.
`(“Seki”).
`
`Li, “A Novel Broadband Wireless OFDMA Scheme for Downlink in
`Cellular Communications,” Samsung Advanced Institute of
`Technology (IEEE) (2003) (“Li-Samsung”)
`
`Hara et al., “Multicarrier Techniques for 4G Mobile
`Communications,” Artech House (2003) (excerpts) (“Hara”)
`
`U.S. Patent Application Pub. No. 2004/0228270 to Chen et al.
`(“Chen”)
`
`Van Nee et al., “OFDM for Wireless Multimedia Communications,”
`Artech House (2000) (“Van Nee”) (excerpts)
`
`Bahai et al., “Multi-Carrier Communications Theory and
`Applications of OFDM,” Springer Science (2004) (excerpts)
`(“Bahai”)
`
`U.S. Patent No. 7,039,001 to Krishnan et al. (Krishnan”)
`
`U.S. Patent No. 6,992,621 to Casas et al. (“Casas”)
`
`U.S. Patent No. 5,596,329 to Searle et al. (“Searle”)
`
`U.S. Patent Application Pub. No. 2005/0075125 to Bada et al.
`(“Bada”).
`
`Curriculum Vitae of Dr. Paul Min
`
`U.S. Provisional Patent Application No. 60/421,309 to Walton et al.
`(“’309 Provisional”)
`
`
`
`- ii -
`
`
`
`Case IPR2022-01539
`U.S. Patent No. 10,965,512
`
`Description
`
`U.S. Patent No. 7,012,882 to Wang et al. (“Wang”)
`
`Transfer Order, In re: Neo Wireless, LLC, Patent Litigation, Case
`MDL No. 3034, issued June 14, 2022 (ECF No. 50)
`
`Docket Sheet, Neo Wireless, LLC v. Volkswagen Group of America,
`Inc., Case No. 2:22-cv-11404 (E.D. Mich.)
`
`United States District Courts – National Judicial Caseload Profile,
`June 2022
`
`U.S. Patent No. 8,934,473 to Li et al.
`
`U.S. Patent No. 8,432,891 to Li et al.
`
`U.S. Patent No. 11,388,034 to Li et al.
`
`Kim et al., “Synchronization and Cell-Search Technique Using
`Preamble for OFDM Cellular Systems,” IEEE Transactions on
`Vehicular Technology, Vo. 56, No. 6, November 2007
`
`Kim et al., “A Preamble-Based Cell Searching Technique
`for OFDM Cellular Systems,” IEEE, 2003
`
`U.S. Patent No. 9,749,168 to Li et al.
`
`Declaration of William Alberth in Support of Neo Wireless’s
`Opening Claim Construction Brief, In re Neo Wireless, LLC Patent
`Litigation, Case No. 2:22-md-03034-TGB (E.D. Mich.), filed
`February 16, 2023
`
`Transcript of October 30, 2023 Deposition of William P. Alberth, Jr.
`
`Ifeachor et al., Digital Signal Processing: A Practical Approach,
`Second Edition, Prentice Hall, 2002 (excerpts)
`
`Declaration of Dr. Paul Min in Support of Petitioner’s Reply
`
`Exhibit
`No.
`1031
`
`1032
`
`1033
`
`1034
`
`1035
`1036
`1037
`
`1038
`
`1039
`
`1040
`
`1041
`
`1042
`
`1043
`
`1044
`
`
`
`- iii -
`
`
`
`Case IPR2022-01539
`U.S. Patent No. 10,965,512
`
`Description
`
`Transcript of October 19, 2023 Deposition of William P. Alberth, Jr.
`in IPR2022-01537
`
`Memorandum Opinion and Order, In re Neo Wireless, LLC Patent
`Litigation, Case No. 2:22-md-03034-TGB (E.D. Mich.), November
`20, 2023
`
`Intentionally Left Blank
`
`Settlement Agreement (CONFIDENTIAL)
`
`Exhibit
`No.
`
`1045
`
`1046
`
`1047-1054
`1055
`
`
`
`- iv -
`
`
`
`Case IPR2022-01539
`U.S. Patent No. 10,965,512
`
`I.
`
`
`
`STATEMENT OF RELIEF REQUESTED
`
`Volkswagen Group of America, Inc. (“Petitioner Volkswagen Group of
`
`America, Inc.”), and Neo Wireless LLC (“Patent Owner”) (collectively, “the
`
`Parties”) have entered into a confidential settlement agreement that resolves all
`
`underlying disputes between Petitioner Volkswagen Group of America, Inc., and
`
`Patent Owner with respect to U.S. Patent No. 10,965,512 (“the ’512 patent”). A
`
`copy of the Parties’ settlement agreement is being filed with this motion as Exhibit
`
`1055 (the “Agreement”). The Parties are concurrently filing a separate request that
`
`the Agreement be treated as business confidential information and be kept separate
`
`from the files of the involved patent, pursuant to 37 C.F.R. § 42.74(c).
`
`Accordingly, pursuant to 37 C.F.R § 42.74 and the authorization provided by
`
`the Board on January 9, 2024, the Parties jointly request termination of this inter
`
`partes review proceeding with respect to Petitioner Volkswagen Group of
`
`America, Inc.
`
`II.
`
`STATEMENT OF FACTS
`
`The Parties entered into a confidential Agreement that resolves all
`
`underlying disputes between Petitioner Volkswagen Group of America, Inc., and
`
`Patent Owner with respect to the ’512 patent. See EX1055 (Confidential). Pursuant
`
`to the terms of the Agreement, the Parties agreed to jointly seek termination of this
`
`proceeding with respect to Petitioner Volkswagen Group of America, Inc.
`
`- 1 -
`
`
`
`Case IPR2022-01539
`U.S. Patent No. 10,965,512
`
`III. ARGUMENT
`
`A. Termination is appropriate.
`
`IPR proceedings “shall be terminated with respect to any petitioner upon the
`
`joint request of the petitioner and the patent owner, unless the Office has decided
`
`the merits of the proceeding before the request for termination is filed.” 35 U.S.C.
`
`§317(a). Petitioner Volkswagen Group of America, Inc., and Patent Owner have
`
`settled their dispute regarding the ’512 patent, including both this proceeding and
`
`Patent Owner’s assertion of the ’512 patent against Petitioner Volkswagen Group
`
`of America, Inc., in the related district court litigations, Neo Wireless, LLC v.
`
`Volkswagen Group of America, Inc., 1-22-cv-00076 (E.D. Tenn.); Neo Wireless,
`
`LLC v. Volkswagen Group of America, Inc., 2-22-cv-11404 (E.D. Mich); and In
`
`Re: Neo Wireless, LLC Patent Litigation, No. 2-22-md-03034 (E.D. Mich.). The
`
`Parties do not anticipate further litigation between them concerning the ’512
`
`patent.2 The Parties are therefore jointly requesting termination of this proceeding
`
`with respect to Petitioner Volkswagen Group of America, Inc. At the time of this
`
`
`2 Also currently before the Board are instituted inter partes reviews of U.S.
`
`Patent Nos. 10,447,450 (Case No. IPR2022-01567) and 10,075,941 (Case No.
`
`IPR2022-01537). The Parties are concurrently filing motions to terminate those
`
`proceedings as well pursuant to this settlement agreement.
`
`- 2 -
`
`
`
`Case IPR2022-01539
`U.S. Patent No. 10,965,512
`motion, the Office has not decided the merits of this IPR. Termination of this IPR
`
`with respect to Petitioner Volkswagen Group of America, Inc., is therefore
`
`appropriate. See 35 U.S.C. §317(a).
`
`Good cause exists to terminate this proceeding between Volkswagen Group
`
`of America, Inc. and Patent Owner because the Parties have settled their dispute
`
`regarding the ’512 patent. The Board’s Trial Practice Guide stresses that “[t]here
`
`are strong public policy reasons to favor settlement between the parties to a
`
`proceeding.” PTAB November 2019 Consolidated Trial Practice Guide, at 86.
`
`Further, the Office has not decided the merits of the proceeding. Terminating the
`
`proceeding now would serve the interests of judicial economy as well as the
`
`mutual interest of the Parties.
`
`B. Written Agreement
`
`The Parties represent that their entire agreement in connection with the
`
`termination of this proceeding is embodied in the Agreement, which has been
`
`made in writing. There are no collateral agreements or understandings made in
`
`connection with, or in contemplation of, the termination of this inter partes review.
`
`Pursuant to 35 U.S.C. §317(b), a true and correct copy of the Agreement is
`
`filed herewith by Petitioner Volkswagen Group of America, Inc. as Exhibit 1055.
`
`The Agreement has been filed for access by the Board only due to the highly
`
`sensitive business confidential information it contains. The Parties desire that the
`
`- 3 -
`
`
`
`Case IPR2022-01539
`U.S. Patent No. 10,965,512
`Agreement be maintained as business confidential information with respect to all
`
`others under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), and a separate joint
`
`request to treat the settlement agreement as business confidential information is
`
`being filed concurrently.
`
`IV. CONCLUSION
`
`Petitioner Volkswagen Group of America, Inc., and Patent Owner
`
`respectfully request that the Board grant the Parties’ Joint Motion to Terminate this
`
`proceeding with respect to Petitioner Volkswagen Group of America, Inc.
`
`Respectfully submitted,
`STERNE, KESSLER, GOLDSTEIN & FOX PLLC
`
`/Michael D. Specht/
`
`Michael D. Specht
`Registration No. 54,463
`Counsel for Petitioner
`Volkswagen Group of America, Inc.
`
`LOWENSTEIN & WEATHERWAX LLP
`
`/Parham Hendifar/
`
`Parham Hendifar
`Registration No. 71,470
`Counsel for Patent Owner
`
`- 4 -
`
`Date: January 9, 2024
`1101 K Street, NW, 10th Floor
`Washington, DC 20005
`(202) 371-2600
`
`Date: January 9, 2024
`1016 Pico Boulevard
`Santa Monica, CA 90405
`(310) 307-4500
`
`
`
`Case IPR2022-01539
`U.S. Patent No. 10,965,512
`CERTIFICATE OF SERVICE (37 C.F.R. § 42.6(e)(1))
`
`The undersigned certifies that a true and correct copy of the foregoing
`
`JOINT MOTION TO TERMINATE INTER PARTES REVIEW was served in
`
`its entirety electronically via e-mail on January 9, 2024, on the following parties:
`
`Counsel for Patent Owner
`Kenneth J. Weatherwax (Lead Counsel)
`Nathan Lowenstein (Back-up Counsel)
`Parham Hendifar (Back-up Counsel)
`Nick Yakoobian (Back-up Counsel)
`Xu Zhou (Back-up Counsel)
`LOWENSTEIN & WEATHERWAX LLP
`CALDWELL, CASSADY, & CURRY P.C.
`weatherwax@lowensteinweatherwax.com
`NeoWireless_IPRs@lowensteinweatherwax.com
`
`Counsel for Petitioner Ford Motor Company (IPR2023-00764)
`John S. LeRoy (Lead Counsel)
`Christopher Smith (Back-up Counsel)
`Kyle G. Konz (Back-up Counsel)
`BROOKS KUSHMAN P.C.
`FPGP0139IPR@brookskushman.com
`
`Counsel for Petitioners General Motors LLC, Nissan North America, Inc.,
`Tesla, Inc., and American Honda Motor Co., Inc. (IPR2023-00961)
`Timothy W. Riffe (Lead Counsel)
`Usman A. Khan (Back-up Counsel)
`John T. Johnson (Back-up Counsel)
`Jeffrey C. Mok (Back-up Counsel)
`FISH & RICHARDSON P.C.
`Reginald J. Hill (Back-up Counsel)
`Nicole A. Keenan (Back-up Counsel)
`JENNER & BLOCK LLP
`IPR18768-0206IP1@fr.com
`PTABInbound@fr.com
`rhill@jenner.com
`nkeenan@jenner.com
`
`
`
`
`
`
`
`Case IPR2022-01539
`U.S. Patent No. 10,965,512
`
`
`
`Further, the undersigned certifies that a true and correct copy of confidential
`
`Exhibit 1055 was served in its entirety electronically via e-mail on January 9,
`
`2024, on the following parties:
`
`Counsel for Patent Owner
`Kenneth J. Weatherwax (Lead Counsel)
`Nathan Lowenstein (Back-up Counsel)
`Parham Hendifar (Back-up Counsel)
`Nick Yakoobian (Back-up Counsel)
`Xu Zhou (Back-up Counsel)
`LOWENSTEIN & WEATHERWAX LLP
`CALDWELL, CASSADY, & CURRY P.C.
`weatherwax@lowensteinweatherwax.com
`NeoWireless_IPRs@lowensteinweatherwax.com
`
`Respectfully submitted,
`
`
`
`STERNE, KESSLER, GOLDSTEIN & FOX PLLC
`
`/Michael D. Specht/
`
`Michael D. Specht
`Registration No. 54,463
`Counsel for Petitioner
`Volkswagen Group of America, Inc.
`
`
`
`
`
`
`
`
`
`
`
`
`
`Date: January 9, 2024
`1101 K Street, NW, 10th Floor
`Washington, DC 20005
`(202) 371-2600
`
`
`
`
`
`
`21639291.1
`
`
`
`
`
`
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