`571.272.7822
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`
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` Paper No. 43
`Filed: February 23, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`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 Hyundai Motor Company
`
`Ltd., Hyundai Motor America, Hyundai Motor Manufacturing Alabama,
`
`LLC, Kia Motors Corporation, Kia Motors America, Inc., and Kia Motors
`
`Manufacturing Georgia, Inc. (“Hyundai/Kia entities”) and Patent Owner
`
`filed, on February 17, 2017, a Joint Motion to Terminate. Paper 40. The
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`written settlement agreement, made in connection with the termination of the
`
`instant proceeding, is filed in the record as Exhibit 2015, in accordance with
`
`35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b). Exhibit 2015. Additionally,
`
`the Hyundai/Kia entities and Patent Owner submitted a joint request to have
`
`their settlement agreement treated as business confidential information under
`
`35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). Paper 41. The filings convey
`
`that the Hyundai/Kia entities and Patent Owner have settled their dispute and
`
`have agreed to request termination of the instant proceeding. Paper 40, 1.
`
`The filings also state that the Hyundai/Kia entities and Patent Owner have
`
`moved to dismiss 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 the Hyundai/Kia entities and Patent
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`Owner, it would not be appropriate at this juncture, with other entities
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`remaining, to terminate either the proceeding in its entirety or Patent
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`Owner’s participation. Upon consideration of the requests before us, we
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`determine that terminating the instant proceeding with respect to only the
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`Hyundai/Kia entities is proper.
`
`2
`
`
`
`
`
`IPR2016-00418
`Patent 8,155,342 B2
`
`
`Accordingly, it is:
`
`
`
`ORDERED that the joint motion to terminate IPR2016-00418 is
`
`granted in part;
`
`FURTHER ORDERED that the instant proceeding is hereby
`
`terminated as to the Hyundai/Kia entities only; and
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`FURTHER ORDERED that the joint request that the settlement
`
`agreement between the Hyundai/Kia entities and Patent Owner be treated as
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`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:
`
`Joseph Melnik (Lead Counsel)
`Joseph Beauchamp (Back-up Counsel)
`H. Albert Liou (Back-up Counsel)
`jmelnik@jonesday.com
`jbeauchamp@jonesday.com
`aliou@jonesday.com
`
`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
`
`David Tarnoff (Lead Counsel)
`Sean Hsu (Back-up Counsel)
`Suzanne Konrad
`DTarnoff@giplaw.com
`shsu@jvllp.com
`SKonrad@giplaw.com
`
`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
`
`
`
`4
`
`
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