Volkswagen Group of America, Inc.v.Signal IP, Inc.

Patent Trial and Appeal Board

Jan 4, 2016

08795999 (P.T.A.B. Jan. 4, 2016)

Trials@uspto.gov Paper 11
Tel: 571-272-7822 Entered: January 4, 2016
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

VOLKSWAGEN GROUP OF AMERICA, INC.,
Petitioner,
v.
SIGNAL IP, INC.,
Patent Owner.

Case IPR2015-01088
Patent 5,954,775

Before JOSIAH C. COCKS, MITCHELL G. WEATHERLY, and
CHARLES J. BOUDREAU, Administrative Patent Judges.
BOUDREAU, Administrative Patent Judge.
DECISION
Joint Motion to Terminate
35 U.S.C. § 317; 37 C.F.R. §§ 42.72, 42.74

IPR2015-01088
Patent 5,954,775
2
On December 30, 2015, Volkswagen Group of America, Inc.
(“Petitioner”) and Signal IP, Inc. (“Patent Owner”) filed a “Joint Motion to
Terminate Inter Partes Review” (Paper 9, “Mot.” or “Motion”), indicating
that the parties have resolved their dispute and have reached an agreement
to, among other things, terminate this review (Mot. 2). The parties
concurrently filed a copy of a “Settlement and License Agreement” executed
by Petitioner and Patent Owner (Ex. 2004,1 “Agreement”) and a “Joint
Request to Keep Paper Separate” (Paper 10, “Req.”) indicating that the
Agreement contains business confidential information and requesting that it
be kept as a separate paper to be made available only under the provisions of
35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) (Req. 2).
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 trial phase of this proceeding is in its early stages, as Patent
Owner has not yet filed a Patent Owner Response and Petitioner has not yet
filed a Reply. Accordingly, we have not yet decided the merits of the
proceeding. Moreover, apart from the instant Motion, there are no
outstanding motions in this proceeding. Under these circumstances, we are
persuaded that it is appropriate to terminate this proceeding with respect to
both Petitioner and Patent Owner without rendering a final written decision
pursuant to 35 U.S.C. § 318(a). See 37 C.F.R. §§ 42.72, 42.74.

1 The parties filed the Settlement and License Agreement as Exhibit 2001,
but Patent Owner previously filed copies of certain district court filings as
Exhibits 2001 through 2003 on September 3, 2015. Accordingly, the
Settlement and License Agreement has been renumbered as Exhibit 2004.
IPR2015-01088
Patent 5,954,775
3
Accordingly, it is
ORDERED that the Joint Motion to Terminate Inter Partes Review is
granted;
FURTHER ORDERED that the Inter Partes Review instituted on
October 29, 2015, is terminated with respect to both Petitioner and Patent
Owner; and
FURTHER ORDERED that the Joint Request to Keep Paper Separate
is granted, and Exhibit 2004 is to be kept separate from the file of the
involved U.S. Patent No. 5,954,775 and treated as confidential business
information to be made available only under the provisions of 35 U.S.C.
§ 317(b) and 37 C.F.R. § 42.74(c).

IPR2015-01088
Patent 5,954,775
4

For PETITIONER:

Michael J. Lennon
Clifford A. Ulrich
Michelle Carniaux
KENYON & KENYON LLP
mlennon@kenyon.com
culrich@kenyon.com
mcarniaux@kenyon.com
ptab@kenyon.com

For PATENT OWNER:

Tarek Fahmi
Holly J. Atkinson
ASCENDA LAW GROUP, PC
tarek.fahmi@ascendalaw.com
holly.atkinson@ascendalaw.com
patents@ascendalaw.com