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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_____________
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`HYUNDAI MOTOR COMPANY,
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`Petitioner
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`v.
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`MICHIGAN MOTOR TECHNOLOGIES LLC,
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`Patent Owner
`
`Case IPR2018-01077
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`Patent No. 7,143,501
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`____________________________________________________________
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`JOINT MOTION OF PETITIONER AND PATENT OWNER
`TO TERMINATE PROCEEDING
`PURSUANT TO 35 U.S.C. § 317
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`
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`Case IPR2018-01077
`Patent 7,143,501
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`STATEMENT OF PRECISE RELIEF REQUESTED
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`Pursuant to 35 U.S.C. § 317, 37 C.F.R. § 42.74, and the Board’s September
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`24, 2018 email granting the Parties permission to file this motion, Petitioner
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`Hyundai Motor Company (“Hyundai”) and Patent Owner Michigan Motor
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`Technologies LLC (“MMT”) (collectively the “Parties”) jointly request
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`termination of this Inter Partes Review, Case No. IPR2018-01077. As there are no
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`other petitioners in this proceeding and the proceeding is still at an early stage, the
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`Parties respectfully submit that termination of the proceeding is appropriate.
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`STATEMENT OF FACTS
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`MMT sued Hyundai in Michigan Motor Technologies LLC v. Hyundai
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`Motor Company et al, No. 2:17-cv-12901 (E.D. Mich), alleging infringement of
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`U.S. Patent No. 7,143,501 (“the ’501 patent”).
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`Hyundai filed a Petition for Inter Partes Review of the ’501 patent on May
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`19, 2018. A Patent Owner Preliminary Response has not been filed nor has an
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`Institution Decision been issued in this case.
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`The Parties have reached an agreement to end the present actions between
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`them. Filed herewith is a true copy of the Parties agreement (Exhibit 1010). A
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`“Joint Request to File Settlement Agreement as Business Confidential Information
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`Under 35 U.S.C. § 317(b)” is being filed concurrently with this Joint Motion to
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`Terminate to keep the settlement agreement confidential.
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`
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`1
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`
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`Case IPR2018-01077
`Patent 7,143,501
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`ARGUMENT
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`A joint motion to terminate generally “must (1) include a brief explanation
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`as to why termination is appropriate; (2) identify all parties in any related litigation
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`involving the patents at issue; (3) identify any related proceedings currently before
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`the Office, and (4) discuss specifically the current status of each such related
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`litigation or proceeding with respect to each party to the litigation or proceeding.”
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`Heartland Tanning, Inc. v. Sunless, Inc., IPR2014-00018, Paper 26 at 2 (PTAB Jul.
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`28, 2014).
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`The Board should terminate this case as the Parties jointly request, for the
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`following reasons.
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`1. Brief Explanation As To Why Termination is Appropriate
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`The Parties have met the statutory requirement that they file a “joint request”
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`to terminate this proceeding before the office “has decided the merits of the
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`proceeding.” 35 U.S.C. § 317(a). A decision on institution of this case is still
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`many weeks away. No prior motions are pending.
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`The Parties have reached a settlement in the related litigation as to the ’501
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`patent and to end this dispute. A copy of the confidential settlement is filed
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`concurrently herewith. See Ex. 1010. The Parties further jointly certify that there
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`is no other agreement or understanding between them, including any collateral
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`agreements, made in connection with, or in contemplation of, the termination of
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`2
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`
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`Case IPR2018-01077
`Patent 7,143,501
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`the instant proceeding as set forth in 35 U.S.C. § 317(b).
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`The Parties respectfully submit that termination of this proceeding is
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`appropriate because (a) this proceeding is at an early stage and no motions are
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`outstanding; (b) the Parties have reached agreement to end their dispute concerning
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`U.S. Patent No. 7,143,501; (c) the Parties have agreed to dismiss the related district
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`court litigation with respect to U.S. Patent No. 7,143,501; (d) the Parties agree that
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`this Inter Partes Review should be terminated; and (e) termination of this
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`proceeding will preserve the Board’s resources and obviate the need for any more
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`Board involvement in this matter.
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`2. Identity of All Parties in Related Litigations Involving the Patent-At-Issue
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`The parties in Michigan Motor Technologies LLC v. Hyundai Motor
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`Company et al, Case No. 2:17-cv-12901 (E.D. Mich) are Patent Owner, MMT,
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`Petitioner, Hyundai, and Hyundai America Technical Center, Inc.
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`3. Identity of Any Related Proceedings Currently Before the Office
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`There are no other pending proceedings before the Office related to the ’501
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`patent.
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`4. Current Status of Each Related Litigation and Proceeding
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`The joint stipulation filed in Case No. 2:17-cv-12901 requests dismissal with
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`prejudice of all of Patent Owner’s claims relating to the ’501 patent.
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`3
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`Case IPR2018-01077
`Patent 7,143,501
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`CONCLUSION
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`For at least the foregoing reasons, Petitioner Hyundai Motor Company and
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`Patent Owner Michigan Motor Technologies LLC respectfully request termination
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`of this Inter Partes Review.
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`Dated: September 26, 2018
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`Respectfully submitted,
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`/Brian C. McCormack/
`Brian C. McCormack, Reg. No. 36,601
`Baker & McKenzie LLP
`1900 North Pearl Street, Suite 1500
`Dallas, Texas 75201
`Tel: (214) 978-3007
`brian.mccormack@bakermckenzie.com
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`Counsel for Petitioner
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`
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`/Timothy Devlin/
`Timothy Devlin, Reg. No. 41,706
`Devlin Law Firm LLC
`1306 N. Broom Street, 1st Floor
`Wilmington, DE 19806
`Tel: (302) 449-9010
`Fax: (302) 353-4251
`tdevlin@devlinlawfirm.com
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`Counsel for Patent Owner
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`4
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`
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`Case IPR2018-01077
`Patent 7,143,501
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`
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`CERTIFICATE OF SERVICE
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`I certify that on September 26, 2018 I am causing a copy of this Joint
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`
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`Motion to Terminate, including all attachments, exhibits, and documents therewith,
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`to be served upon the Patent Owner by filing this document as well as by delivering a
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`copy via email to the following attorneys of record for the Patent Owner:
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`
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`Timothy Devlin
`tdevlin@devlinlawfirm.com
`DEVLIN LAW FIRM LLC
`1306 N. Broom Street, 1st Floor
`Wilmington, DE 19806
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`
`
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`Dated: September 26, 2018
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`Respectfully submitted,
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`/Brian C. McCormack/
`Brian C. McCormack, Reg. No. 36,601
`Baker & McKenzie LLP
`1900 North Pearl Street, Suite 1500
`Dallas, Texas 75201
`Tel: (214) 978-3007
`brian.mccormack@bakermckenzie.com
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`Counsel for Petitioner
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`
`
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