`
`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 REQUEST TO KEEP AGREEMENT BUSINESS CONFIDENTIAL
`AND SEPARATE UNDER 37 C.F.R. § 42.74(c)
`
`
`
`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
`Volkswagen Group of America, Inc. (“Petitioner Volkswagen Group of
`
`America, Inc.”) and Neo Wireless LLC (“Patent Owner”) (collectively, “the
`
`Parties”) are filing, concurrently with a Joint Motion to Terminate Inter Partes
`
`Review, a true copy of an executed settlement agreement (EX1055) 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”).
`
`Pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), the Parties hereby jointly
`
`request that Exhibit 1055 be treated as business confidential information and be
`
`kept separate from the files of the ’512 Patent. The Board authorized the Parties to
`
`file this joint request in an email of January 9, 2024.
`
`The Parties consider Exhibit 1055 to contain highly sensitive confidential
`
`business information that would substantially harm their business interests if
`
`publicly disclosed. As such, the Parties hereby jointly request that Exhibit 1055 be
`
`kept separate from the files of the ’512 Patent as set forth in 35 U.S.C § 317(b)
`
`and 37 C.F.R. § 42.74(c). The Parties hereby certify that, to the best of their
`
`knowledge, Exhibit 1055 has not been made publicly available. The settlement
`
`agreement has been filed for access by the Board only, and a copy will not be
`
`served on any other Party, due to its confidential business information.
`
`
`
`
`
`- 1 -
`
`
`
`Case IPR2022-01539
`U.S. Patent No. 10,965,512
`
`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
`
`
`
`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
`
`- 2 -
`
`
`
`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 REQUEST TO KEEP AGREEMENT BUSINESS CONFIDENTIAL
`
`AND SEPARATE UNDER 37 C.F.R. § 42.74(c) 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
`
`
`
`
`
`
`
`Case IPR2022-01539
`U.S. Patent No. 10,965,512
`
`
`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.
`
`PTABInbound@fr.com
`rhill@jenner.com
`nkeenan@jenner.com
`
`
`Date: January 9, 2024
`1101 K Street, NW, 10th Floor
`Washington, DC 20005
`(202) 371-2600
`
`21639292.1
`
`
`
`
`
`
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