`
`
`
`
`
` Paper No. 42
`
`Trials@uspto.gov
`Filed: February 21, 2017
`
`571.272.7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`TOYOTA MOTOR CORPORATION, HYUNDAI MOTOR COMPANY
`LTD., HYUNDAI MOTOR AMERICA, HYUNDAI MOTOR
`MANUFACTURING ALABAMA, LLC, KIA MOTORS CORPORATION,
`KIA MOTORS AMERICA, INC., KIA MOTORS MANUFACTURING
`GEORGIA, INC., NISSAN NORTH AMERICA, INC., NISSAN MOTOR
`CO., LTD., and AMERICAN HONDA MOTOR CO., INC.,
`Petitioner,
`
`v.
`
`BLITZSAFE TEXAS, LLC,
`Patent Owner.
`
`____________
`
`Case IPR2016-004181
`Patent 8,155,342 B2
`
`____________
`
`Before JAMESON LEE, MIRIAM L. QUINN, and KERRY BEGLEY,
`Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`
`DECISION
`Granting Termination as to Petitioner Toyota Motor Corporation
`37 C.F.R. § 42.72
`
`
`1 Cases IPR2016-01533, IPR2016-01557, and IPR2016-01560 have been
`joined with this proceeding.
`
`
`
`IPR2016-00418
`Patent 8,155,342 B2
`
`
`On authorization from the Board, Petitioner Toyota Motor
`
`Corporation (“Toyota”) filed, on February 17, 2017, a Joint Motion to
`Terminate. Paper 38. Toyota also filed a written settlement agreement,
`made in connection with the termination of the instant proceeding, in
`accordance with 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b). Exhibit 2014.
`Additionally, the parties submitted a joint request to have their settlement
`agreement treated as confidential business information under 35 U.S.C.
`§ 317(b) and 37 C.F.R. § 42.74(c). Paper 39. The filings convey that the
`parties have settled their dispute and have agreed to request termination of
`the instant proceeding. Paper 38, 1. The filings also state that the parties
`have settled and dismissed the related district court litigation, which was
`pending in the U.S. District Court for the Eastern District of Texas. Id.
`Although this proceeding is in a late stage and we have heard oral
`argument, the Board has not yet issued a Final Written Decision, which is
`not due for another four months. However, several other entities will remain
`as Petitioner in this proceeding. Therefore, although the motion requests
`termination of the proceeding as to both Toyota and Patent Owner, it would
`not be appropriate at this juncture, with other entities remaining, to terminate
`either the proceeding in its entirety or Patent Owner’s participation. Upon
`consideration of the requests before us, we determine that terminating the
`instant proceeding with respect to only Petitioner Toyota Motor Corporation
`is proper.
`Accordingly, it is:
`ORDERED that the joint motion to terminate IPR2016-00418 is
`
`granted in part;
`
`
`
`2
`
`
`
`IPR2016-00418
`Patent 8,155,342 B2
`
`
`FURTHER ORDERED that the instant proceeding is hereby
`terminated as to Petitioner Toyota Motor Corporation only; and
`FURTHER ORDERED that the joint request that the settlement
`agreement between Toyota Motor Corporation and Patent Owner be treated
`as business confidential information, kept separate from the patent file, and
`made available only to Federal Government agencies on written request, or
`to any person on a showing of good cause, pursuant to 35 U.S.C. § 317(b)
`and 37 C.F.R. § 42.74(c), is granted.
`
`
`
`3
`
`
`
`IPR2016-00418
`Patent 8,155,342 B2
`
`PETITIONER:
`
`IPR2016-00418:
`William H. Mandir (Lead Counsel)
`Yoshinari Kishimoto (Back-up Counsel)
`John F. Rabena (Back-up Counsel)
`Fadi N. Kiblawi (Back-up Counsel)
`Margaret M. Welsh (Back-up Counsel)
`toyota@sughrue.com
`
`IPR2016-01557:
`Joseph Melnik (Lead Counsel)
`Joseph Beauchamp (Back-up Counsel)
`H. Albert Liou (Back-up Counsel)
`jmelnik@jonesday.com
`jbeauchamp@jonesday.com
`aliou@jonesday.com
`
`IPR2016-01557:
`Paul R. Steadman (Lead Counsel)
`Matthew D. Satchwell (Back-up Counsel)
`Gianni Minutoli (Back-up Counsel)
`Nicholas Panno (Back-up Counsel)
`paul.steadman@dlapiper.com
`matthew.satchwell@dlapiper.com
`Gianni.minutoli@dlapiper.com
`Nicholas.panno@dlapiper.com
`
`IPR2016-01560:
`David Tarnoff (Lead Counsel)
`Sean Hsu (Back-up Counsel)
`Suzanne Konrad
`DTarnoff@giplaw.com
`shsu@jvllp.com
`SKonrad@giplaw.com
`
`
`
`
`4
`
`
`
`IPR2016-00418
`Patent 8,155,342 B2
`
`PATENT OWNER:
`Peter Lambrianakos (Lead Counsel)
`Shahar Harel (Back-up Counsel)
`Vincent Rubino (Back-up Counsel)
`plambrianakos@brownrudnick.com
`sharel@brownrudnick.com
`vrubino@brownrudnick.com
`
`
`
`5
`
`
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
