Hyundai Motor America, Inc.v.Clear with Computers, LLC

Patent Trial and Appeal Board

Jul 12, 2013

12577194 (P.T.A.B. Jul. 12, 2013)

Trials@uspto.gov IPR2013-00104 Paper No. 18
571-272-7822 IPR2013-00176 Paper No. 20
Date Entered: July 12, 2013
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

HYUNDAI MOTOR AMERICA, INC.
Petitioner

v.

CLEAR WITH COMPUTERS, LLC
Patent Owner,
____________

Case IPR2013-00104
&
Case IPR 2013-00176

Patent 8,121,904
____________

Before, HOWARD B. BLANKENSHIP, BRIAN J. McNAMARA and,
TRENTON A WARD, Administrative Patent Judges.

McNAMARA, Administrative Patent Judge.

JUDGMENT
TERMINATION OF THE PROCEEDINGS

37C.F.R. § 42.73

Case IPR 2013-00104, IPR 2013-00176
Patent 8,121,904

2

On June 28, 2013, the Parties filed a Joint Motion to Terminate Proceedings
under 35 U.S.C. § 317 and 37 C.F.R. § 42.74(b) (Motion to Terminate) in
IPR2013-00104 and IPR2013-00176 (the IPR Proceedings). The parties’ Motion
to Terminate stated that “[t]he parties have settled their dispute and have reached
agreement to terminate these inter partes reviews. A true copy of the Agreement
reflecting this agreement is attached hereto as Exhibit A.” Motion to Terminate 1-
2. The Agreement, dated June 28, 2013 and attached as Exhibit A to the Motion to
Terminate, stated that whereas the Parties have agreed to resolve an underlying
litigation and the inter partes reviews and whereas Patent Owner has filed an
unopposed motion to dismiss with prejudice all claims against Petitioner for
infringement of the ’904 Patent, the Parties agree that they shall jointly move for
termination of the IPR Proceedings.
Although the Agreement filed as Exhibit A to the Motion to Terminate
stated that the Parties had settled their dispute, the Agreement had no terms other
than an agreement to move to terminate the IPR proceedings. On July 3, 2013, the
Board ordered the Parties to certify in writing that there are no other written or oral
agreements or understandings, including any collateral agreements, between them,
including but not limited to, licenses, covenants not sue, confidentiality
agreements, or other agreements of any kind, that are made in connection with, or
in contemplation of, the termination of the IPR Proceedings. 35 U.S.C. § 317(b).
Case IPR 2013-00104, IPR 2013-00176
Patent 8,121,904

3

The Board also required that Patent Owner certify that there are no other patent
infringement suits involving the ’904 Patent at this time.
In a teleconference with the Board on July 11, 2013, the Parties represented
that, although there may be other ongoing disputes between them, there were no
other agreements or payments made in consideration of the termination of the IPR
Proceedings or the dismissal of the underlying litigation involving the ’904 patent.
The Parties also submitted the written certification required in the Board’s order of
July 3, 2013. The Patent Owner further stated in the written certification that there
are no pending patent infringement suits involving the ’904 patent.
In view of the Parties’ certification that the IPR Proceedings are settled and
that there are no collateral agreements of any kind, and the Patent Owner’s
certification that there are no pending infringement suits involving U.S. Patent
8,212,904, the Board determines that it is appropriate to enter judgment
1
without
rendering a final written decision.
In view of the foregoing,
It is ORDERED that the Parties’ Motion to Terminate IPR2013-00104 and
IPR2013-00176 is GRANTED and the IPR Proceedings are terminated.

1
A judgment means a final written decision of the Board or a termination of a
Proceeding. 37 C.F.R. § 42.2
Case IPR 2013-00104, IPR 2013-00176
Patent 8,121,904

4

PETITIONER: (via electronic transmission)
Michael J. Scheer
Winston & Strawn LLP
mscheer@winston.com

PATENT OWNER: (via electronic transmission)
Tarek N. Fahmi
Fahmi, Sellers, Embert & Davitz
patents@fseip.com