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 MOTORSLLC,
`NISSAN NORTH AMERICA,INC., TESLA, INC., and
`AMERICAN HONDA MOTORCO., INC.,!
`Petitioner,
`
`V.
`
`NEO WIRELESS, LLC,
`Patent Owner.
`
`IPR2022-01539
`Patent 10,965,512 B2
`
`Before HYUN J. JUNG, JO-ANNE M. KOKOSKI,and
`MATTHEWS. MEYERS, Administrative Patent Judges.
`
`JUNG,Administrative Patent Judge.
`
`TERMINATION
`Due to Settlement After Institution of Trial
`35 U.S.C. § 317; 37 CFR. § 42.74
`
`' Ford Motor Companyfiled a motion forjoinder and a petition in IPR2023-
`00764, and General Motors LLC, Nissan North America, Inc., Tesla, Inc.,
`and American Honda MotorCo., Inc., filed their own motion forjoinder 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 beenjoined 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 MOTORSLLC,
`NISSAN NORTH AMERICA,INC., TESLA, INC., and
`AMERICAN HONDA MOTORCO., INC.,!
`Petitioner,
`
`V.
`
`NEO WIRELESS, LLC,
`Patent Owner.
`
`IPR2022-01539
`Patent 10,965,512 B2
`
`Before HYUN J. JUNG, JO-ANNE M. KOKOSKI,and
`MATTHEWS. MEYERS, Administrative Patent Judges.
`
`JUNG,Administrative Patent Judge.
`
`TERMINATION
`Due to Settlement After Institution of Trial
`35 U.S.C. § 317; 37 CFR. § 42.74
`
`' Ford Motor Companyfiled a motion forjoinder and a petition in IPR2023-
`00764, and General Motors LLC, Nissan North America, Inc., Tesla, Inc.,
`and American Honda MotorCo., Inc., filed their own motion forjoinder 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 beenjoined as petitioners
`in this proceeding.
`
`
`
`IPR2022-01539
`Patent 10,965,512 B2
`
`I.
`
`INTRODUCTION
`
`Volkswagen Group ofAmerica,Inc. (“VWGoA”) filed a Petition
`
`seeking institution of an interpartes review of claims 1—30 ofU.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 (Paper6),
`
`weinstituted an interpartes review. Paper7.
`
`In IPR2023-00764, Ford Motor Company(“Ford”) filed a petition and
`
`a motionforjoinder requesting that Ford be joined as a petitioner in
`
`IPR2022-01539, which wasgranted, 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 MotorCo., Inc. (“Honda”) filed a petition
`
`and a motion forjoinder requesting that they be joined as petitioners in
`
`IPR2022-01539, which wasgranted, and, therefore, they have also been
`
`joinedas petitionersin this proceeding. Paper 29.
`
`On January 9, 2024, VWGoAand Patent Owner Neo Wireless, LLC
`
`(“Neo Wireless’’) filed a Joint Motion to Terminate /nter Partes Review
`
`with Respect to VWGOA,whichwasgranted, and, consequently, Ford, GM,
`
`Nissan, Tesla, and Hondaremainedaspetitionersin 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 representthat a Joint Stipulation to Dismiss
`
`(Ex. 2101 (“Joint Stipulation”or “Joint Stip.”)) “resolvesall pending
`
`disputes” between the Parties with respect to the °512 patent. Mot. 4; see
`
`
`
`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 ofthe
`
`Joint Stipulation has beenfiled and “certify that there are no other collateral
`
`agreements or understandings between them made in connection with,or in
`
`contemplation of, termination ofthis proceeding.” /d. at 6, 7.
`
`IW.
`
`DISCUSSION
`
`Under 35 U.S.C. § 317(a), “[a]n interpartes review instituted under
`
`this chapter shall be terminated with respect to any petitioner upon thejoint
`
`request ofthe petitioner and the patent owner, unless the Office has decided
`
`the merits ofthe proceeding before the request for termination is filed.” Any
`
`agreementor understanding “made in connection with, or in contemplation
`
`of, the termination of an inferpartes review” must be in writing, anda true
`
`copy of any such documents mustbefiled 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
`
`Boardhasnot yet decided the merits ofthis interpartes review.” Id.
`
`Accordingly, we terminate this interpartes review with respecttoall
`
`presentparties. 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).
`
`
`
`IPR2022-01539
`Patent 10,965,512 B2
`
`I. ORDER
`
`Accordingly, for the reasons discussed above,it 1s:
`
`ORDEREDthat the Parties’ Joint Motion to Terminate (Paper 50) is
`
`granted;
`
`FURTHER ORDEREDthatthis proceeding 1s terminatedasto all
`
`parties;
`
`FURTHER ORDEREDthispaperdoesnot constitute a final written
`
`decision pursuant to 35 U.S.C. § 318(a);
`
`FURTHER ORDEREDthata copy of this Order be entered into each
`
`of IPR2023-00764 and IPR2023-00961;
`
`FURTHER ORDEREDthat IPR2023-00764is terminated under
`
`37 C.F.R. § 42.72; and
`
`FURTHER ORDEREDthat IPR2023-00961 is terminated under
`
`37 C.F.R. § 42.72.
`
`
`
`IPR2022-01539
`Patent 10,965,512 B2
`
`FOR PETITIONER (GENERAL MOTORSLLC, NISSAN NORTH
`AMERICA,INC., TESLA, INC., and AMERICANHONDA MOTORCO.,
`INC.):
`
`Timothy Riffe
`Usman Khan
`John Johnson
`Jeffrey Mok
`FISH & RICHARDSONP.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:
`
`KennethJ. Weatherwax
`Parham Hendifar
`Ed Hsieh
`LOWENSTEIN & WEATHERWAXLLP
`weatherwax@lowensteinweatherwax.com
`hendifar@lowenstemweatherwax.com
`hsieh@lowensteinweatherwax.com
`NeoWireless_IPRs@lowensteinweatherwax.com
`
`
`
`IPR2022-01539
`Patent 10,965,512 B2
`
`Hamad M. Hamad
`Xu Zhou
`CALDWELL, CASSADY, & CURRYP.C.
`xzhou@caldwellcc.com
`hhamad@caldwellcc.com
`
`
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