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

Patent Trial and Appeal Board

Jan 23, 2015

09310527 (P.T.A.B. Jan. 23, 2015)

Trials@uspto.gov Paper No. 10
571-272-7822
Paper No. 30
Date Entered: January 23, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

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 Nissan North America, Inc.
35 U.S.C. § 317 and 37 C.F.R. § 42.72
Case IPR2014-00289
Patent 6,324,463

2

1. Introduction
On December 23, 2014, Cruise Control Technologies LLC (“Patent Owner”)
and Nissan North America, Inc. (“Nissan”) (collectively referred to as “the
Parties”), as authorized
1
, filed a Joint Motion to Terminate this inter partes review
proceeding with respect to Nissan. Paper 27 (“Joint Motion to Terminate”). Along
with the Joint Motion to Terminate, the Parties filed a true copy of their written
settlement agreement (Ex. 2000), as well as a joint request (Paper 28) 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).
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 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 Nissan 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, Nissan 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 Nissan will file no
further papers. It also will not be participating in any oral argument.

Joint Motion to Terminate 1.

1
The motion was authorized via e-mail correspondence from Board personnel on
December 19, 2014.
Case IPR2014-00289
Patent 6,324,463

3

Upon consideration of the circumstances of this proceeding, the panel has
determined to terminate the inter partes review (IPR2014-00289) as to Nissan.
3. Order
It is
ORDERED that, as was requested timely by the Parties (Paper 28), the
settlement agreement (Exhibit 2000) 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 Nissan in IPR2014-00289 is granted.

Case IPR2014-00289
Patent 6,324,463

4

FOR PETITIONER:

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

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

Matthew D. Satchwell
DLA PIPER LLP (US)
matthew.satchwell@dlapiper.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