Trials@uspto.gov
`571.272.7822
`
`Paper 51
`Date: February 7, 2024
`
`
`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
`Petitioner,
`
`v.
`
`NEO WIRELESS, LLC,
`Patent Owner.
`_______________
`
`IPR2022-01539
`Patent 10,965,512 B2
`_______________
`
`
`Before HYUN J. JUNG, JO-ANNE M. KOKOSKI, and
`MATTHEW S. MEYERS, Administrative Patent Judges.
`
`JUNG, Administrative Patent Judge.
`
`
`
`TERMINATION
`Due to Settlement After Institution of Trial
`35 U.S.C. § 317; 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.
`
`
`
`
`571.272.7822
`
`Paper 51
`Date: February 7, 2024
`
`
`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
`Petitioner,
`
`v.
`
`NEO WIRELESS, LLC,
`Patent Owner.
`_______________
`
`IPR2022-01539
`Patent 10,965,512 B2
`_______________
`
`
`Before HYUN J. JUNG, JO-ANNE M. KOKOSKI, and
`MATTHEW S. MEYERS, Administrative Patent Judges.
`
`JUNG, Administrative Patent Judge.
`
`
`
`TERMINATION
`Due to Settlement After Institution of Trial
`35 U.S.C. § 317; 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.
`
`
`
`
`
`IPR2022-01539
`Patent 10,965,512 B2
`
`
`INTRODUCTION
`I.
`Volkswagen Group of America, Inc. (“VWGoA”) filed a Petition
`seeking institution of an inter partes review of claims 1–30 of U.S. Patent
`No. 10,965,512 B2 (Ex. 1001, “the ’512 patent”). Paper 1. After reviewing
`the Petition (Paper 1) and Patent Owner’s Preliminary Response (Paper 6),
`we instituted an inter partes review. Paper 7.
`In IPR2023-00764, Ford Motor Company (“Ford”) filed a petition and
`a motion for joinder requesting that Ford be joined as a petitioner in
`IPR2022-01539, which was granted, and, therefore, Ford has been joined as
`a petitioner in this proceeding. Paper 15. In IPR2023-00961, General
`Motors LLC (“GM”), Nissan North America, Inc. (“Nissan”), Tesla, Inc.
`(“Tesla”), and American Honda Motor Co., Inc. (“Honda”) filed a petition
`and a motion for joinder requesting that they be joined as petitioners in
`IPR2022-01539, which was granted, and, therefore, they have also been
`joined as petitioners in this proceeding. Paper 29.
`On January 9, 2024, VWGoA and Patent Owner Neo Wireless, LLC
`(“Neo Wireless”) filed a Joint Motion to Terminate Inter Partes Review
`with Respect to VWGoA, which was granted, and, consequently, Ford, GM,
`Nissan, Tesla, and Honda remained as petitioners in this proceeding.
`Paper 49.
`On January 29, 2024, with our authorization, Ford, GM, Nissan,
`Tesla, Honda, and Neo Wireless (collectively, the “Parties”) filed a Joint
`Motion to Terminate the above-identified proceeding. Paper 50 (“Joint
`Motion” or “Mot.”). The Parties represent that a Joint Stipulation to Dismiss
`(Ex. 2101 (“Joint Stipulation” or “Joint Stip.”)) “resolves all pending
`disputes” between the Parties with respect to the ’512 patent. Mot. 4; see
`
`2
`
`
`
`IPR2022-01539
`Patent 10,965,512 B2
`
`also id. at 6 (stating similarly that the Parties “have entered into a Stipulation
`resolving all underlying disputes . . . with respect to the ’512 Patent”), 7
`(stating that the “Stipulation . . . resolves all disputes . . . with respect to the
`’512 Patent”). The Parties also represent that a true and correct copy of the
`Joint Stipulation has been filed and “certify that there are no other collateral
`agreements or understandings between them made in connection with, or in
`contemplation of, termination of this proceeding.” Id. at 6, 7.
`
`II. DISCUSSION
`Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under
`this chapter 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.” Any
`agreement or understanding “made in connection with, or in contemplation
`of, the termination of an inter partes review” must be in writing, and a true
`copy of any such documents must be filed in the Office before termination.
`Id. § 317(b); accord 37 C.F.R. § 42.74(b).
`The Parties represent that they have complied with the applicable
`requirements. Also, as noted by the Parties, “oral hearing has not been held
`and a Final Written Decision is not due until May 2, 2024.” Mot. 7. We,
`thus, agree with the Parties that “[t]ermination is appropriate . . . because the
`Board has not yet decided the merits of this inter partes review.” Id.
`Accordingly, we terminate this inter partes review with respect to all
`present parties. See 35 U.S.C. § 317(a); 37 C.F.R. § 42.74. This Order does
`not constitute a final written decision pursuant to 35 U.S.C. § 318(a).
`
`
`3
`
`
`
`IPR2022-01539
`Patent 10,965,512 B2
`
`
`III. ORDER
`Accordingly, for the reasons discussed above, it is:
`ORDERED that the Parties’ Joint Motion to Terminate (Paper 50) is
`granted;
`FURTHER ORDERED that this proceeding is terminated as to all
`parties;
`FURTHER ORDERED this paper does not constitute a final written
`decision pursuant to 35 U.S.C. § 318(a);
`FURTHER ORDERED that a copy of this Order be entered into each
`of IPR2023-00764 and IPR2023-00961;
`FURTHER ORDERED that IPR2023-00764 is terminated under
`37 C.F.R. § 42.72; and
`FURTHER ORDERED that IPR2023-00961 is terminated under
`37 C.F.R. § 42.72.
`
`
`
`
`4
`
`
`
`IPR2022-01539
`Patent 10,965,512 B2
`
`FOR PETITIONER (GENERAL MOTORS LLC, NISSAN NORTH
`AMERICA, INC., TESLA, INC., and AMERICAN HONDA MOTOR CO.,
`INC.):
`
`Timothy Riffe
`Usman Khan
`John Johnson
`Jeffrey Mok
`FISH & RICHARDSON P.C.
`riffe@fr.com
`khan@fr.com
`jjohnson@fr.com
`jmok@fr.com
`
`Reginald Hill
`Nicole Keenan
`JENNER & BLOCK LLP
`rhill@jenner.com
`nkeenan@jenner.com
`
`FOR PETITIONER (FORD MOTOR COMPANY):
`
`John S. LeRoy
`Christopher Smith
`LATHAM & WATKINS LLP
`jleroy@brookskushman.com
`csmith@brookskushman.com
`
`FOR PATENT OWNER:
`
`Kenneth J. Weatherwax
`Parham Hendifar
`Ed Hsieh
`LOWENSTEIN & WEATHERWAX LLP
`weatherwax@lowensteinweatherwax.com
`hendifar@lowensteinweatherwax.com
`hsieh@lowensteinweatherwax.com
`NeoWireless_IPRs@lowensteinweatherwax.com
`
`
`5
`
`
`
`IPR2022-01539
`Patent 10,965,512 B2
`
`Hamad M. Hamad
`Xu Zhou
`CALDWELL, CASSADY, & CURRY P.C.
`xzhou@caldwellcc.com
`hhamad@caldwellcc.com
`
`
`6
`
`
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