American Honda Motor Co., Inc.v.Cruise Control Technologies LLC,

Patent Trial and Appeal Board

Dec 10, 2014

09310527 (P.T.A.B. Dec. 10, 2014)

Trials@uspto.gov
571-272-7822
Paper No. 26
Date Entered: December 10, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

AMERICAN HONDA MOTOR CO., INC., TOYOTA MOTOR NORTH
AMERICA, INC., NISSAN NORTH AMERICA INC., LLC, FORD MOTOR
COMPANY, JAGUAR LAND ROVER NORTH AMERICA LLC, SUBARU OF
AMERICA, INC., and VOLVO CARS OF NORTH AMERICA LLC,
Petitioner,

v.

CRUISE CONTROL TECHNOLOGIES LLC,
Patent Owner.
____________

Case IPR2014-00289
Patent 6,324,463
____________

Before JOSIAH C. COCKS, HYUN J. JUNG, and GEORGE R. HOSKINS,
Administrative Patent Judges.

COCKS, Administrative Patent Judge.

DECISION
Joint Motion to Terminate the Inter Partes Review
with Respect to American Honda Motor Co., Inc.
35 U.S.C. § 317 and 37 C.F.R. § 42.72
Case IPR2014-00289
Patent 6,324,463

2

1. Introduction
On November 14, 2014, Cruise Control Technologies LLC (“Patent
Owner”) and American Honda Motor Co., Inc. (“Honda”) (collectively referred to
as “the Parties”) filed a Joint Motion to Terminate this inter partes review
proceeding with respect to Honda. Paper 22 (“Joint Motion to Terminate”)1.
Along with the Joint Motion to Terminate, the Parties filed a true copy of the
written settlement agreement (Ex. 1014), as well as a joint request (Paper 23) to
have the settlement agreement treated as business confidential information under
35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
2. Discussion
Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under this
chapter shall be terminated with respect to any petitioner upon the joint request of
the petitioner and the patent owner, unless the Office has decided the merits of the
proceeding before the request for termination is filed.” The Parties also state the
following in the Joint Motion to Terminate:
Patent Owner and Honda respectfully submit that termination is
appropriate because they have reached an agreement resolving the
dispute involving the patent at issue in the above-captioned Inter
Partes Review, it is prior to full briefing on the issues raised in the
above-captioned Inter Partes Review, and the Board has not issued a
final written decision. Further, Honda represents that it will no longer
participate even if the Board does not terminate its participation in the
above-captioned Inter Partes Review. That means Honda will file no
further papers. It also will not be conducting any further cross
examination of Patent Owner’s witnesses and will not be participating
in any oral argument.

1 The motion was authorized in a conference call on November 12, 2014. Paper
24.
Case IPR2014-00289
Patent 6,324,463

3

Joint Motion to Terminate 1.
Upon consideration of the circumstances of this proceeding, the panel has
determined to terminate the inter partes review (IPR2014-00289) as to Honda.
3. Order
It is
ORDERED that, as was requested timely by the Parties (Paper 23), the
settlement agreement (Exhibit 1014) will be treated as business confidential
information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c); and
FURTHER ORDERED that the Joint Motion to Terminate the involvement
of Honda in IPR2014-00289 is granted.

Case IPR2014-00289
Patent 6,324,463

4

FOR PETITIONER:

Matthew D. Satchwell
Paul Steadman
DLA PIPER LLP (US)
matthew.satchwell@dlapiper.com
Subaru-CCT-IPR@dlapiper.com

John M. Caracappa
Tremayne M. Norris
STEPTOE & JOHNSON LLP
jcaracap@steptoe.com
tnorris@steptoe.com

William H. Mandir
SUGHRUE MION PLLC
wmandir@sughrue.com

Wab Kadaba
KILPATRICK TOWNSEND & STOCKTON LLP
wkadaba@kilpatricktownsend.com

Matthew J. Moore
LATHAM & WATKINS LLP
matthew.moore@lw.com

FOR PATENT OWNER:

John R. Kasha
Kelly L. Kasha
KASHA LAW LLC
john.kasha@kashalaw.com
kelly.kasha@kashalaw.com