`571.272.7822
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` Paper No. 50
`Filed: March 10, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`NISSAN NORTH AMERICA, INC. and NISSAN MOTOR CO., LTD,
`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 Motion to Terminate Proceeding
`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, Nissan North America, Inc. and
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`Nissan Motor Co., Ltd. (“Petitioner”) and Patent Owner filed, on March 7,
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`2017, a Joint Motion to Terminate. Paper 48. The written settlement
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`agreement, made in connection with the termination of the instant
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`proceeding, is filed in the record as Exhibit 2017, in accordance with
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`35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b). Exhibit 2017. Additionally,
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`Petitioner and Patent Owner submitted a joint request to have their
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`settlement agreement treated as confidential business information under
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`35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). Paper 49. The filings convey
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`that the parties have settled their dispute and have agreed to request
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`termination of the instant proceeding. Paper 48, 1. The filings also state that
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`the parties have filed a motion to dismiss the related district court litigation,
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`which was pending in the U.S. District Court for the Eastern District of
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`Texas. Id.
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`Although this proceeding is in a late stage and we have heard oral
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`argument, the Board has not yet issued a Final Written Decision, which is
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`not due for another four months. With the exception of Petitioner, as
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`identified above, and Patent Owner, the Board has terminated all other
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`remaining entities. Papers 42, 43, and 46. Therefore, when terminating the
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`participation of Petitioner, no other entity will remain as Petitioner. Under
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`the circumstances of this case, and on the record now before us, we exercise
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`our discretion to terminate this proceeding in its entirety.
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`Accordingly, it is:
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`
`
`ORDERED that the joint motion to terminate IPR2016-00418 is
`
`granted;
`
`
`
`2
`
`
`
`IPR2016-00418
`Patent 8,155,342 B2
`
`
`FURTHER ORDERED that the instant proceeding is hereby
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`terminated as to Petitioner and Patent Owner;
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`FURTHER ORDERED that the instant proceeding, and all the joined
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`proceedings (IPR2016-01533, IPR2016-01557, and IPR2016-01560), are
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`closed; and
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`FURTHER ORDERED that the joint request that the settlement
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`agreement between Petitioner and Patent Owner be treated as business
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`confidential information, kept separate from the patent file, and made
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`available only to Federal Government agencies on written request, or to any
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`person on a showing of good cause, pursuant to 35 U.S.C. § 317(b) and
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`37 C.F.R. § 42.74(c), is granted.
`
`
`
`3
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`
`
`IPR2016-00418
`Patent 8,155,342 B2
`
`PETITIONER:
`
`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
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`4
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