UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`FORD MOTOR COMPANY, GENERAL MOTORS LLC,
`NISSAN NORTH AMERICA, INC., TESLA, INC., and
`AMERICAN HONDA MOTOR CO., INC.,1
`Petitioners,
`
`v.
`
`NEO WIRELESS, LLC,
`Patent Owner.
`
`
`IPR2022-01539
`Patent 10,965,512 B2
`
`
`JOINT MOTION TO TERMINATE
`PURSUANT TO 35 U.S.C. § 317 AND 37 C.F.R. § 42.74
`
`
`
`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.
`
`1
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`FORD MOTOR COMPANY, GENERAL MOTORS LLC,
`NISSAN NORTH AMERICA, INC., TESLA, INC., and
`AMERICAN HONDA MOTOR CO., INC.,1
`Petitioners,
`
`v.
`
`NEO WIRELESS, LLC,
`Patent Owner.
`
`
`IPR2022-01539
`Patent 10,965,512 B2
`
`
`JOINT MOTION TO TERMINATE
`PURSUANT TO 35 U.S.C. § 317 AND 37 C.F.R. § 42.74
`
`
`
`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.
`
`1
`
`
`
`EXHIBIT LIST
`
`2001 Declaration of William P. Alberth, Jr. [Alberth-Decl.]
`
`2002 William P. Alberth, Jr. Curriculum Vitae [Alberth-CV]
`
`2003
`
`2004
`
`2005
`
`2006
`
`In re Neo Wireless, LLC Patent Litigation, 2:22-MD-03034-TGB, Joint
`Claim Construction Statement [Joint-CC-Statement]
`
`In re Neo Wireless, LLC Patent Litigation, 2:22-MD-03034-TGB, Exhibit
`A - Agreed Litigation Terms [Agreed-Lit.-Terms]
`
`In re Neo Wireless, LLC Patent Litigation, 2:22-MD-03034-TGB, Exhibit
`B - Disputed Litigation Terms [Disputed-Lit.-Terms]
`
`In re Neo Wireless, LLC Patent Litigation, 2:22-MD-03034-TGB, Notice
`of Stipulation Regarding Claim Construction [Stip-Re-CC]
`
`2007 Reserved
`
`2008 Reserved
`
`2009
`
`In re Neo Wireless, LLC Patent Litigation, 2:22-MD-03034-TGB, ECF
`No. 84 [Dkt. 84]
`
`2010 Second Declaration of William P. Alberth, Jr. [Alberth-2nd-Decl.]
`
`2011 Deposition of Paul Min, Ph.D. [Min-Depo.]
`
`Reserved
`
`2012-
`2029
`
`2030 Pro Hac Vice Declaration of Xu Zhou [Zhou-PHV-Decl.]
`
`Reserved
`
`2031-
`2099
`
`2
`
`
`
`2100 Neo-Mercedes Settlement Agreement [Confidential] [Filed Filing Party
`and Board Only]
`
`2101 Stipulation between Neo Wireless LLC and Remaining Petitioners
`
`3
`
`
`
`STATEMENT OF RELIEF REQUESTED
`
`Pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.74, all parties to this
`
`proceeding, namely Petitioners Ford Motor Company, General Motors LLC,
`
`Nissan North America, Inc., Tesla, Inc., and American Honda Motor Co., Inc.
`
`(collectively “Petitioners”) and Patent Owner Neo Wireless LLC (“Neo”) jointly
`
`request termination of this proceeding with respect to Petitioners as a result of a
`
`Stipulation by Petitioners and Neo that resolves all pending disputes between
`
`Petitioners and Neo with respect to U.S. Patent. No. 10,965,512 (“’512 Patent”). A
`
`copy of the stipulation is filed concurrently herewith as Exhibit 2101.
`
`Granting this motion will result in termination of the proceeding in its
`
`entirety, as Petitioners and Neo constitute all remaining parties in this matter. The
`
`Board has already terminated this case with respect to its original lead petitioner,
`
`Volkswagen Group of America, Inc. See Paper 49. The Board authorized filing of
`
`this Joint Motion via email on January 23, 2024.
`
`STATEMENT OF FACTS
`
`On March 29, 2022, Neo asserted the ’512 Patent against parties
`
`Volkswagen Group of America, Inc., Ford Motor Company, General Motors LLC,
`
`Nissan North America, Inc., Tesla, Inc., and American Honda Motor Co., Inc. in
`
`actions entitled Neo Wireless LLC v. Volkswagen Group of America, Inc. et al.,
`
`Case No. 1:22-cv-00076 (E.D. Tex.); Neo Wireless LLC v. General Motors Co et
`
`4
`
`
`
`al, Case No. 2:22-cv-00094 (E.D. Tex.); Neo Wireless LLC v. Tesla, Inc., Case No.
`
`2:22-cv-00095 (E.D. Tex.); Neo Wireless LLC v. Nissan North America Inc. et al,
`
`Case No. 3:22-cv-00220 (M.D. Tenn.); Neo Wireless LLC v. American Honda
`
`Motor Co., Inc., Case No. 2:22-cv-01824 (S.D. Ohio); Neo Wireless LLC v. Ford
`
`Motor Company, Case No. 4:22-cv-00210 (W.D. Mo).
`
`All of the aforementioned matters were conditionally transferred to the
`
`Eastern District of Michigan for consolidated pretrial proceedings, as part of a
`
`multi-district litigation, in actions entitled In re Neo Wireless LLC Patent Litig.,
`
`Case No. 2:22-md-03034 (E.D. Mich.), Neo Wireless, LLC v. Volkswagen Group
`
`of America, Inc. et al., Case No. 2:22-cv-11404 (E.D. Mich.), Neo Wireless LLC v.
`
`General Motors Co et al, Case No. 2:22-cv-11407 (E.D. Mich.), Neo Wireless LLC
`
`v. Tesla, Inc., Case No. 2:22-cv-11408 (E.D. Mich.), Neo Wireless LLC v. Nissan
`
`North America Inc. et al, Case No. 2:22-cv-11405 (E.D. Mich.), Neo Wireless LLC
`
`v. American Honda Motor Co., Inc., Case No. 2:22-cv-11403 (E.D. Mich.), Neo
`
`Wireless LLC v. Ford Motor Company, Case No. 2:22-cv-11402 (E.D. Mich.).
`
`The original lead petitioner in this case, Volkswagen Group of America Inc.
`
`(“VW”), filed the instant petition (IPR2022-01539) for inter partes review of the
`
`’512 Patent on September 15, 2022. The Board granted institution on May 2,
`
`2023. Ford Motor Company (“Ford”) filed its petition for inter partes review of
`
`the ’512 Patent on March 28, 2023, along with a motion to join IPR2022-01539.
`
`5
`
`
`
`The Board granted institution and Ford’s motion for joinder on July 17, 2023.
`
`General Motors LLC, Nissan North America, Inc., Tesla, Inc., and American
`
`Honda Motor Co., Inc. (collectively, “Joint Petitioners”) jointly filed their petition
`
`for inter partes review of the ’512 Patent on June 2, 2023, along with a motion to
`
`join IPR2022-01539. The Board granted institution and Joint Petitioners’ motion
`
`for joinder on September 21, 2023. Pursuant to settlement and a motion to
`
`terminate, filed January 9, 2024 by Neo and VW, the Board has since ordered
`
`dismissal of VW as a party and terminated this case as to VW only on January 23,
`
`2024. See Paper 49.
`
`Neo and Petitioners have entered into a Stipulation resolving all underlying
`
`disputes between Neo and Petitioners with respect to the ’512 Patent. A true and
`
`correct copy of the Stipulation is filed as Exhibit 2101. Under the terms of the
`
`Stipulation, Neo “stipulates and covenants that neither it nor any of its subsidiaries
`
`or successors-in-interest will sue any of the Defendants or their current affiliates
`
`for infringement of the ’512 Patent.” Id., 2. Petitioners “agree to promptly contact
`
`the PTAB” to dismiss this proceeding, and “further agree not to initiate or
`
`participate in any other invalidity challenges to the ’512 Patent.” Id., 3. The
`
`district court for the Eastern District of Michigan, where the pending cases have
`
`been consolidated for pre-trial proceedings, has entered the parties’ stipulation as
`
`the order of the court. Id., 7.
`
`6
`
`
`
`ARGUMENT
`
`Pursuant to 35 U.S.C. § 317(a), “[a]n inter partes review 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.” See also 37 C.F.R. § 42.72 (“The Board may
`
`terminate a trial without rendering a final written decision, where appropriate,
`
`including where the trial is consolidated with another proceeding or pursuant to a
`
`joint request under 35 U.S.C. 317(a) or 327(a).”).
`
`As noted above, pursuant to 35 U.S.C. § 317(a)-(b), Petitioners and Neo
`
`request termination of this proceeding in its entirety and are filing herewith their
`
`Stipulation as Exhibit 2101, which resolves all disputes between Petitioners and
`
`Neo with respect to the ’512 Patent. The Stipulation has also been entered by the
`
`district court as the order of the court. Id., 7. Petitioners and Neo certify that there
`
`are no other collateral agreements or understandings between them made in
`
`connection with, or in contemplation of, termination of this proceeding.
`
`Termination is appropriate as to Petitioners because the Board has not yet
`
`decided the merits of this inter partes review. Indeed, oral hearing has not been
`
`held and a Final Written Decision is not due until May 2, 2024, one year from
`
`institution (Paper 7, Institution Decision dated May 2, 2023).
`
`7
`
`
`
`Moreover, no other party’s rights would be prejudiced by the termination of
`
`this inter partes review, as all remaining Petitioners are party to the Stipulation and
`
`an order granting termination with respect to the ’512 Patent has already been
`
`entered in the district court matter, 2:22-md-03034-TGB (E.D.Mich.). Ex. 2101, 7.
`
`Accordingly, Petitioners and Neo, constituting all present parties to this
`
`proceeding, respectfully jointly request that the Board grant this Joint Motion to
`
`Terminate IPR2022-01539.
`
`
`
`
`
`Dated: January 29, 2024 Respectfully submitted,
`
`
`
`
`
`
`
`
`
`/Parham Hendifar/
`
`Parham Hendifar, Reg. No. 71,470
`LOWENSTEIN & WEATHERWAX LLP
`1016 Pico Blvd.
`Santa Monica, CA 90405
`
`Counsel for Patent Owner Neo Wireless, LLC
`
`
`
`/John S. LeRoy/
`
`John S. LeRoy, Reg. No. 48,158
`Christopher C. Smith, Reg. No. 59,669
`Kyle G. Konz, Reg. No. 68,910
`BROOKS KUSHMAN P.C.
`150 W. Second St., Suite 400N
`Royal Oak, MI 48067-3846
`
`Counsel for Petitioner
`
`8
`
`
`
`
`
`Ford Motor Company
`
`
`
`
`
`/Timothy W. Riffe/
`Timothy W. Riffe, Reg. No. 43,881
`Usman A. Khan, Reg. No. 70,439
`John T. Johnson, Reg. No. 37,363
`Jeffrey C. Mok, Reg. No. 69,878
`FISH & RICHARDSON, P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`
`Reginald J. Hill , Reg. No. 39,225
`Nicole A Keenan, Reg. No. 48,622
`JENNER & BLOCK LLP
`353 N. Clark Street
`Chicago, IL 60654
`
`Counsel for Petitioners
`General Motors LLC,
`Nissan North America, Inc.,
`Tesla, Inc.,
`American Honda Motor Co., Inc.
`
`9
`
`
`
`CERTIFICATE OF SERVICE
`The undersigned certifies that a copy of the following document was served
`via electronic service, by consent between the parties:
`
`
`JOINT MOTION TO TERMINATE
`PURSUANT TO 35 U.S.C. § 317 AND 37 C.F.R. § 42.74
`
`The names and address of the parties being served are as follows:
`
`John S. LeRoy
`Christopher Smith
`Kyle G. Konz
`
`Timothy W. Riffe
`Usman A. Khan
`
`John T. Johnson
`Jeffrey C. Mok
`Reginald J. Hill
`Nicole A Keenan
`
`
`
`
`
`
`FPGP0139IPR@brookskushman.com
`
`
`
`IPR18768-0206IP1@fr.com
`PTABInbound@fr.com
`
`
`rhill@jenner.com
`nkeenan@jenner.com
`
`
`
`Respectfully submitted,
`
` / Parham Hendifar /
`
`Date: January 29, 2024
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
