Marathon (MARA) - Joint Post Markman Report

Case 2:14-cv-02962-JAK-JEM Document 78 Filed 04/13/15 Page 1 of 18 Page ID #:4396
Ryan E. Hatch (SBN 235577)

rhatch@linerlaw.com
Jason L. Haas (SBN 217290)
2
jhaas@linerlaw.com
LINER LLP
3 1100 Glendon Avenue, 14th Floor
Los Angeles, California 90024.3518
4 Telephone: (310) 500-3500
Facsimile: (310) 500-3501
5
Attorneys for Plaintiff SIGNAL IP, INC.
6
1
7
UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
9
10
SIGNAL IP, INC., a California

11 corporation,
12
13
Plaintiff,
vs.
14 AMERICAN HONDA MOTOR CO.,

INC., a California corporation;
15 HONDA OF AMERICA MRG, INC.,
an Ohio corporation,
16
Defendant.
17
18 AND RELATED CASES
Case No. 2:14-cv-02454-JAK (JEMx)

(Related to 2:14-cv-02962-JAK
(JEMx); SA CV14-00497-JAK (JEMx);
8:14-cv-00491-JAK (JEMx); 2:14-cv02963 JAK (JEMx); 2:14-cv-02457JAK (JEMx); 2:14-cv-03111-JAK
(JEMx); LA CV14-03109 JAK (JEMx);
2:14-cv-03113-JAK (JEMx); 2:14-cv03108-JAK (JEMx); 2:14-cv-03114JAK (JEMx))
JOINT POST-MARKMAN REPORT
The Hon. John A. Kronstadt
Trial Date:
TBD
19
20
21
Plaintiff Signal IP, Inc., (Plaintiff or Signal) and defendants American
22 Honda Motor Co., Inc. and Honda of America Mfg., Inc. (collectively Honda),
23 Nissan North America, Inc. (Nissan), Mitsubishi Motors North America, Inc.
24 (Mitsubishi), Mazda Motor of America, Inc. (Mazda), Subaru of America, Inc.
25 (Subaru), Kia Motors America, Inc. (KMA), BMW of North America, LLC
26 (BMWNA), Mercedes-Benz USA, LLC (Mercedes), Volkswagen Group of
27 America, Inc. (VWGoA), Bentley Motors, Inc. (Bentley), Jaguar Land Rover
28
1 North America, LLC (JLRNA), and Porsche Cars North America, Inc. (PCNA)
2 (collectively, Defendants) hereby submit their Joint Post-Markman Report.
3 I.
Preliminary Statement
This joint report is submitted pursuant to the Courts prior orders in this
5 action. Many Defendants requested that any joint report on post-Markman

6 proceedings be deferred in part until one week after the Court issues its final
7 Markman ruling, and that any status conference take place at least two weeks
8 thereafter, due to the practical difficulties of setting a schedule prior to issuance of
9 that ruling. Plaintiff did not oppose these requests. On April 13, 2015, the Court
10 issued an order deferring a joint status report (other than on issues relating to
11 mediation and the status of reexamination, inter partes review and other
12 proceedings) until April 27, 2015, and setting a status conference for May 7, 2015.
13 (D.E. 85 in Case No. 2:14-cv-03113-JAK-JEM.) The parties hereby submit a
14 detailed report only on the status of mediation efforts and on the other proceedings
15 involving the patents in suit.
16 II.
Mediation Status
17
A.
18
In the parties December 19, 2014 joint reports, the parties announced that
Plaintiffs Statement
19 Defendants Bentley, Honda, KMA, Mercedes, Mitsubishi, Nissan, PCNA, and

20 VWGoA had agreed with Plaintiff to mediateat a later timewith Hon. Irma E.
21 Gonzalez (Ret.), a former United States District Judge for the Southern District of
22 California. (See e.g. Case No. 2:14-cv-02962-JAK-JEMx, D.E. 59, 2.) The
23 remaining Defendants similarly agreed to mediate, also at a later time, with Los
24 Angeles-based patent attorney, Mark Flagel. (Id.)
25
Limited progress has been made on the settlement front to date. No
26 mediations have taken place or been scheduled. Plaintiff has, however, directly
27 reached a settlement with Volvo Cars of North America, LLC, and that action was
28
2
1 dismissed by order of the Court on March 3, 2015. Plaintiff has also reached a
2 settlement agreement in principle with JLRNA.
Most of the remaining Defendants have been unwilling to mediate or to
4 discuss settlement until after this Court issued its Markman ruling. Yet most of the
5 Defendants previously agreed with a proposed litigation schedule that set the last
6 date for a settlement conference or mediation for two weeks after the Markman
7 decision. (See e.g. Case No. 2:14-cv-02454-JAK-JEMx, D.E. 36, 9 (all parties
8 except Porsche and VW asked for deadline of 2 weeks after Markman decision).
Plaintiff hereby requests that the Court direct all the parties to mediate their
10 claims within four (4) weeks after its issues its Markman ruling. 1 2 This request is
11 in keeping with the position of most of the parties prior to claim construction. It is
12 also an opportune time for the parties to explore settlement, as the parties will know
13 how the Court intends to construe the patents but will not yet have incurred many of
14 the costs involved in discovery and preparation for trial. While Plaintiff does not
15 anticipate that all of the parties could find common ground, ordering mediation now
16 will likely allow some number of additional actions to achieve a quick resolution.
17 This would reduce the scale of the related actions and allow the remaining parties to
18 set a more efficient schedule for the rest of the litigation.
19
B.
Defendants Statement
20
Defendants agree with Plaintiffs description of the selection of mediators.
21 However, Defendants oppose Plaintiffs proposed timeline requiring mediation

22 within four weeks after this Court issues its Claim Construction order.
According to the Courts December 11, 2014 Order re Issues Raised in Joint
23
24
1
Adding two extra weeks to the prior request provides additional flexibility in light
of the uncertain date for the issuance of this Courts Markman decision, and it
26 should facilitate the scheduling of the mediations and travel for out-of-town parties.
2
27 Because of the pending settlement, mediation between Plaintiff and JLRNA is
unnecessary and should be exempt from any mediation Order.
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1 Report, [n]ot later than 35 days after the issuance of the Claim Construction Order,
2 Plaintiff shall serve a Final Election of Asserted Claims, which shall identify for
3 each case no more than 5 asserted claims per patent from among the previously
4 identified claims and no more than a total of 16 claims. Plaintiffs proposal would
5 require the parties to mediate one week before Plaintiff must serve its Final Election
6 of Asserted Claims. Importantly, the scope of this case will be considerably more
7 focused and thus better-suited for mediation after Plaintiff makes its Final Elections.
8 Therefore, Defendants (other than BMWNA, Honda, MBUSA, Mitsubishi, PCNA,
9 Nissan, and VW) respectfully request that this Court direct all parties to mediate
10 within 28 days after Plaintiffs Final Election of Asserted Claims.
11
BMWNA states that on December 19, 2014, prior to the filing of the Joint
12 Status Report addressing the selection of the mediator (C.A. No. 2:14-cv-03111,
13 Dkt. 47), counsel for BMWNA notified Plaintiff that it was available to mediate
14 during the last two weeks of May. Plaintiff has not offered its availability, nor has it
15 requested to schedule a mediation. BMWNA remains willing to mediate in the last
16 two weeks of May or the first week of June and requests that the deadline to mediate
17 be set sometime thereafter.
18
PCNA and KMA previously agreed to mediate with the Hon. Irma E.
19 Gonzalez (Ret.), a former United States District Judge for the Southern District of
20 California. (D.I. 45). PCNA originally proposed mediation by November 2,
21 2015. (See D.I. 35 Ex. A). PCNA and KMA believe that mediation will be most
22 effective when the issues for trial have been sufficiently narrowed and identified. In
23 addition to the need for Plaintiffs Final Election of Asserted Claims prior to
24 mediation, as discussed above, PCNA and KMA believe that effective mediation
25 can take place only after the patent office has decided whether to institute the IPR
26 petitions filed against Signals patents. A decision from the patent office takes up to
27 six months from filing. Because the patent office could invalidate all of the patents
28
4
1 asserted against PCNA and KMA, the outcome of these petitions could dispose of
2 Signals claims against PCNA and KMA. For this reason, PCNA and KMA
3 propose mediation at the end of October, 2015, after the board has ruled on the
4 merits of the pending IPR petitions.3
VWGoA and Bentley proposed in the original scheduling report that
6 mediation should occur 34 weeks after the Markman decision. (See D.E. 40, Ex. A
7 at 9, filed in the VWGoA case, 2:14-cv-03113-JAK-JEM.) Consistently with that
8 proposal, VWGoA and Bentley believe that any mediation is not likely to be
9 productive until at least after final office actions have been issued in the three
10 Reexamination proceedings that VWGoA filed, and until after the Patent Trial and
11 Appeal Board has rendered decisions whether to institute inter partes review
12 proceedings based upon the nine petitions for review filed by several defendants.
13 As set forth in more detail below in the section on reexaminations and inter partes
14 review proceedings, VWGoA and Bentley expect the final office actions to be
15 issued, and the institution decisions to have been made, by October 2015.
Accordingly, VWGoA and Bentley propose that the Court should not set a
16
17 date for mediation now, and instead should require the parties to provide an updated
18 status report to the Court once the final office actions have issued and institution
19 decisions have been made.
JLRNA confirms that it has reached a settlement agreement in principle with
20
21 Plaintiff and that mediation is unnecessary.

22
23
24
3
Nissan, Mercedes, Honda, and Mitsubishi join PCNA and KMA in their proposal
for an October 2015 mediation. Petitions have been filed against five of the six
26 patents asserted against Nissan, four of the five patents asserted against Mercedes,
27 all five of the patents asserted against Honda, and three of the four patents asserted
against Mitsubishi.
28
25
5
1 III.
Status of Other Proceedings Involving the Patents-in-Suit
A.
In the minute orders issued following the March 31, 2015 Markman hearing,
Plaintiffs Statement
4 this Court directed the parties to include the status of any reexaminations, inter
5 partes reviews, and any other proceedings involving the patents-in-suit in [this] joint
6 report. (See e.g. Case No. 2:14-cv-02454-JAK-JEMx, D.E. 57, 2.)
7
The only reexamination proceedings of which Plaintiff is aware were initiated
8 by VWGoA and Bentley on October 27, 2014. In requests filed on that date,
9 VWGoA and Bentley requested reexaminations of United States Patent No.
10 6,434,486 (the 486 Patent), 6,775,601 (the 601 Patent), and 5,732,375 (the
11 375 Patent). The Patent Office issued office actions rejecting claims in those
12 patents, on a preliminary basis, on February 12, February 18, and March 9,
13 respectively. Signal will be responding to those office actions, and no examiner
14 response is expected until at least August 2015.
15
In the last month, five parties have requested inter partes reviews (IPR) of
16 certain patents-in-suit, but, to date, no reviews have been instituted in response to

17 any of these requests. Mercedes requested an IPR of the 486 Patent on March 16,
18 2015 and an IPR of the 601 Patent on March 25, 2015. VWGoA and Bentley
19 requested an IPR of U.S. Patent No. 5,714,927 (the 927 Patent) on March 30,
20 2015. Ford Motor Company, which was a defendant prior to its transfer to the
21 Eastern District of Michigan, has also requested an IPR of the 601 Patent. Ford
22 filed that request on March 13, 2015. And Honda just filed requests for an IPR of
23 the 486 Patent, 601 Patent, 375 Patent, and of U.S. Patent No. 6,012,007 (the 007
24 Patent). The Patent Owner will begin filing preliminary responses to these IPR
25 requests by June 2015, and no decision by the Patent Office on whether to institute
26 an IPR is anticipated until September 2015 at the earliest.
27
Finally, Plaintiffs actions against Ford Motor Company and against Fiat
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1 U.S.A. Inc., Fiat North America LLC, and Chrysler Group LLC (collectively
2 Chrysler) remain pending in the Eastern District of Michigan. Those actions were
3 related and reassigned to the Hon. Mark A. Goldsmith in late January 2015. On
4 April 7, 2015, Judge Goldsmith issued an order setting a telephonic scheduling
5 conference for April 29, 2015. There have been no other developments in the Ford
6 or Chrysler actions since they were transferred.
7
B.
Defendants Statement
VWGoA filed three reexamination proceedings challenging the 486, 601
9 and 375 patents. Subsequently, nine inter partes review petitions challenging those
10 three patents and two others were filed with the Patent Trial and Appeal Board
11 (PTAB) by defendants both here and in the parallel Michigan litigation. The
12 petitions and reexamination proceedings collectively challenge the validity of the
13 asserted claims in five of the seven patents-in-suit.
14
As a general matter, Signal has the option to file preliminary responses to the
15 IPR petitions within three months of the issuance of a notice from the Patent Trial
16 and Appeal Board (the Board) that the IPR petition has been granted a filing date.
17 The Board then has three months to decide whether to institute inter partes review.
18 If institution is granted, the Board generally has one year from the date of institution
19 to render a final decision on the patentability of the claims under review.
20
The re-examinations and inter partes reviews are likely to simplify the issues
21 involved in these litigations. Many of the asserted claims have been rejected in the
22 re-examination proceedings. In the re-examination of the 601 patent, 90/013,385,
23 the Examiner rejected all of the claims asserted by Plaintiff against Defendants in
24 these actions. See February 18, 2015, Office Action, attached hereto as Exhibit A.
25 In the re-examination of the 375 patent, 90/013,386, the Examiner rejected all of
26 the claims asserted by Plaintiff against Defendants in these actions. See March 9,
27 2015, Office Action, attached hereto as Exhibit B. In the re-examination of the 486
28
7
1 patent, 90/013,384, the Examiner rejected the two independent claims asserted
2 against all defendants and one of the dependent claims. See February 12, 2015,
3 Office Action, attached hereto as Exhibit C.
4
Moreover, regardless of the outcome, the parties and this Court will receive
5 guidance from the Patent Trial and Appeal Boards (PTAB) institution decisions,
6 which will issue by October 2015. Should the PTAB institute trial, the statistics
7 compiled by the USPTO paint a stark picture for the Patent Owner. According to
8 statistics through April 9, 2015, of the 698 IPR institution decisions in fiscal year
9 2015, 516 decisions, or 73.9%, resulted in a trial either through institution or
10 joinder. As of January 1, 2015, of the claims that proceeded to a final written
11 decision, the PTAB found 2,176 claims (77%) unpatentable compared to finding
12 only 643 claims (23%) patentable. There is, thus, a strong likelihood that the IPRs
13 will simplify the issues involved in this litigation.
14
The table and text below summarize on a patent by patent basis all
15 Reexamination proceedings and inter partes review petitions that have been filed to
16 date, their current status, and their expected timelines.
17 The 486 Patent
18
All claims of the 486 patent asserted against VWGoA currently stand
19 rejected in an ex parte reexamination filed by VWGoA (Control No. 90/013,384).

20 These claims and additional claims are also being challenged by two inter partes
21 review petitions, one by MBUSA (Case No. IPR2015-00890) and one by Honda
22 (Case No. IPR2015-01005). The PTAB will make a preliminary decision regarding
23 these IPRs within the next six months. Under the applicable statute, a decision to
24 institute review of the patent claims would mean that the PTAB has found that there
25 is a reasonable likelihood that at least one challenged claim will be found
26 unpatentable in view of one or more prior art patents or printed publications.
27
28
8
1
Number
No. 90/013,384
Requestor
VWGoA
Status
Filed October 27, 2014
Reexamination ordered December 3, 2014
4
5
Office action rejecting all challenged claims

issued February 12, 2015
Signals response submitted April 13, 2015
Final office action expected by August 2015

No. IPR2015-00890 Mercedes
Filed March 16, 2015

Signals response due June 30, 2015
Decision on request expected by September

30, 2015
10
11
Final written decision expected by September

30, 2016
12
No. IPR2015-01005 Honda
13
Filed April 3, 2015

Signals response due mid-July, 2015 4
14
Decision on request expected by midOctober, 2015
15
16
Final written decision expected by midOctober, 2016
17
18
19
VWGoA filed a request for reexamination on October 27, 2014, challenging
20 the three claims asserted by Signal against VWGoA, i.e., claims 21, 26, and 28, in
21 view of six different prior art documents, and asserting seven grounds of rejection.
22 The Examiner agreed with VWGoA that each of the seven proposed grounds raised
23 a substantial new question of patentability, ordering the reexamination of the 486
24 patent on December 3, 2014. On February 12, 2015, the Examiner rejected each of
25
26
These dates are approximate. The schedule for an IPR proceeding runs from
27 the date on which the PTAB accords a filing date to the IPR petition, which it has
not yet done for Hondas petitions.
28
9
1 the challenged claims in an office action. On April 13, 2005 (today), Signal
2 submitted its response to the rejections to the USPTO.
3
MBUSA filed a petition for inter partes review on March 16, 2015,
4 challenging claims 21, 23, 2628, 30, 34, and 35 in view of five different prior art
5 documents, and asserting six grounds of unpatentability. Honda filed a petition for
6 inter partes review on April 3, 2015, challenging claims 1, 2, 68, 13, 14, 21, 22,
7 2629, 33, and 34 in view of five different prior art documents, and asserting nine
8 grounds of unpatentability. Both IPR petitions include prior art documents that are
9 not currently being relied upon in the VWGoA reexamination. The PTAB will
10 decide whether to institute these IPR proceedings by September 30, 2015 (for
11 MBUSAs petition) and mid-October 2015 (for Hondas petition).
12 The 601 Patent
13
14 rejected in a reexamination filed by VWGoA (Control No. 90/013,385). These

15 claims and other claims are also being challenged by four inter partes review
16 petitions (two by Ford, Case Nos. IPR2015-00860 and IPR2015-00861, one by
17 MBUSA, Case No. IPR2015-00941, and one by Honda, Case No. IPR2015-01002).
18 The PTAB will make a preliminary decision regarding these IPRs within the next
19 six months.
20
21
22
23
Number
No. 90/013,385
Requestor
VWGoA
Status
Reexamination ordered November 21, 2014
24
Office action rejecting all challenged claims

issued February 18, 2015
25
Signals response due April 20, 2015
26
27
28
10
Number
Requestor
No. IPR2015-00860 Ford

18, 2015

18, 2016
5
6
7
No. IPR2015-00861 Ford


18, 2015

18, 2016
10
11
12
No. IPR2015-00941 Mercedes
Decision on request expected by October 2,

2015
14
Final written decision expected by October 2,

2016
15
16
18
19
20
21

Signals response expected July 2, 2015
13
17
Status
Filed April 3, 2015

Signals response expected mid-July, 2015
22
23
24 the seven claims asserted against VWGoA, i.e., claims 811, 13, 15, and 17, in view
25 of three different prior art documents, and asserting four grounds of rejection. The
26 Examiner agreed with VWGoA that each of the four proposed grounds raised a
27 substantial new question of patentability, ordering the reexamination of the 601
28 patent on November 21, 2014. On February 18, 2015, the Examiner rejected all
11
1 seven challenged claims. Signals due date for responding to the rejections is April
2 18, 2015.
3
Ford filed two petitions for inter partes review on March 13, 2015,
4 challenging claims 117 in one petition, and claims 14, 611, and 1317 in the
5 other. MBUSA filed a petition for inter partes review on March 25, 2015,
6 challenging claims 811, 13, 15, and 17. Honda filed a petition for inter partes
7 review on April 3, 2015, challenging claim 117. These IPR petitions rely on
8 entirely different prior art documents than those relied upon in VWGoAs
9 reexamination. The PTAB will make a preliminary decision regarding these IPR
10 proceedings by September 18, 2015 (for Fords petitions), the October 2, 2015 (for
11 MBUSAs petition), and by mid-October, 2015 (for Hondas petition).
12 The 375 Patent
13
14 rejected in a reexamination filed by VWGoA (Control No. 90/013,386). The same

15 claims are being challenged by an inter partes review petition filed by Honda (Case
16 No. IPR2015-01003). The PTAB will make a preliminary decision regarding the
17 IPR within the next six months.
18
19
20
Number
No. 90/013,386
Requestor
Status
VWGoA
21
Reexamination ordered December 2, 2014
22
Office action rejecting the claims issued

March 9, 2015
23
24
Signals response due May 11, 2015

25
26
27
28
12
1
2
Requestor
Number
Status
Filed April 3, 2015
Signals response expected mid-July, 2015
6
7
8
9
10
11
12
13
14
15
16
17
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22
23
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25
26

the two claims asserted against VWGoA, i.e., claims 1 and 7, in view of three
different prior art documents, and asserting two grounds of rejection. The Examiner
agreed with VWGoA that each of the proposed grounds raised a substantial new
question of patentability, ordering the reexamination of the 375 patent on
December 2, 2014. On March 9, 2015, the Examiner rejected both of the challenged
claims. Signals due date for responding to the rejections is May 9, 2015.
Honda filed a petition for inter partes review on April 3, 2015, challenging
claims 1 and 7, based in part on prior art documents that are not currently being
relied upon in the VWGoA reexamination. The PTAB will decide whether to
institute the IPR proceedings by mid-October, 2015.
The 927 Patent
VWGoA filed a petition for inter partes review of the 927 patent on March
30, 2015, challenging the three claims asserted by Signal against VWGoA, i.e.,
claims 1, 2, and 6, in view of three prior art documents, including two prior art
documents that were not previously considered by the USPTO, and asserting one
ground of rejection. The PTAB will decide whether to institute the IPR proceedings
by October 9, 2015.
Number
Requestor
Status
27
28
13
1
2
3
4
5
6
Number
Requestor
No. IPR2015-00968 VWGoA
Status
Signals response due July 9, 2015
Decision on request expected by October 9,
2015
Final written decision expected by October 9,
2016
7
8 The 007 Patent
Honda filed a petition for inter partes review of the 007 patent on April 3,
9
10 2015, challenging claims 13, 5, 9, and 1721 in view of two prior art documents,
11 and asserting four grounds of rejection. The PTAB will decide whether to institute
12 IPR proceedings by mid-October, 2015.
Number
Requestor Status
13 No. IPR2015-01004 Honda
Filed April 3, 2015
14
Signals response due mid-July, 2015
15
16
17

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1 Dated: April 13, 2015
LINER LLP
2
3
By:
4
5
6
/s/ Ryan E. Hatch

Ryan E. Hatch
Jason L. Haas
FISH & RICHARDSON P.C.
8
9
By:
10
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/s/ Ralph A. Phillips

Ralph A. Phillips (Pro Hac Vice)
Ahmed J. Davis (Pro Hac Vice)
Attorneys for Defendants
AMERICAN HONDA MOTOR CO., INC:
and HONDA OF AMERICA MFG., INC.
13
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Dated: April 13, 2015
SHOOK, HARDY & BACON L.L.P.
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By:
/s/ Patrick A. Lujin

Patrick A. Lujin
B. Trent Webb
Richard D. Eiszner
Gabriel S. Spooner
Douglas W. Robinson
Jamie H. Kitano
Attorneys for Defendant NISSAN NORTH
AMERICA, INC.
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CHRISTA & JACKSON
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By:
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/s/ Laura K. Christa

Laura K. Christa
Attorneys for Defendant
MITSUBISHI MOTORS NORTH
AMERICA, INC.
7
DLA PIPER, LLP
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By:
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/s/ Matthew D. Satchwell

Matthew D. Satchwell
Clive McClintock
Attorneys for MAZDA MOTOR OF
AMERICA, INC. and SUBARU OF
AMERICA, INC.
GREENBERG TRAURIG LLP
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By:
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/s/ Stephen Shahida

Stephen Shahida
KIA MOTORS AMERICA, INC.
DLA PIPER LLP
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By:
/s/ Joseph P. Lavelle

Joseph P. Lavelle
Andrew N. Stein
Clive McClintock
Attorneys for BMW of North America,
LLC
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GONZALEZ SAGGIO & HARLAN LLP
2
3
By:
4
5
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/s/ Don A. Hernandez

Don A. Hernandez
Christina D. Hernandez
FRIED, FRANK, HARRIS, SHRIVER &
JACOBSON LLP
Scott W. Doyle (pro hac vice)
Jonathan DeFosse (pro hac vice)
Attorneys for Defendant Mercedes-Benz
USA, LLC
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OMELVENY & MYERS LLP
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By:
/s/ Ryan K. Yagura

Ryan K. Yagura
Kevin Murray
KENYON & KENYON LLP
Michael J. Lennon (pro hac vice)
Michael N. Zachary
Susan A. Smith
Attorneys for Defendant VOLKSWAGEN
GROUP OF AMERICA, INC. and
BENTLEY MOTORS, INC.
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LATHAM & WATKINS LLP
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By:
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/s/ Jason M. Garr

Jason M Garr
JAGUAR LAND ROVER NORTH
AMERICA LLC
FROMMER LAWRENCE & HAUG LLP
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By:
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McLEOD & WITHAM LLP

Jeffrey R. Witham
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Attorneys for Defendant PORSCHE CARS

NORTH AMERICA, INC.
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/s/ Edgar H. Haug

Edgar H. Haug (pro hac vice)
Eugene LeDonne (pro hac vice)
ATTESTATION REGARDING SIGNATURES

I, Ryan Hatch, attest that all signatories listed, and on whose behalf the filing
19 is submitted, concur in the filings content and have authorized the filing.
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By:
/s/ Ryan E. Hatch

Ryan E. Hatch
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Case 2:14-cv-02962-JAK-JEM Document 78 Filed 04/13/15 Page 1 of 18 Page ID #:4396

Ryan E. Hatch (SBN 235577)

CENTRAL DISTRICT OF CALIFORNIA

SIGNAL IP, INC., a California

14 AMERICAN HONDA MOTOR CO.,

Case No. 2:14-cv-02454-JAK (JEMx)

Plaintiff Signal IP, Inc., (Plaintiff or Signal) and defendants American

Case 2:14-cv-02962-JAK-JEM Document 78 Filed 04/13/15 Page 2 of 18 Page ID #:4397

5 action. Many Defendants requested that any joint report on post-Markman

19 Defendants Bentley, Honda, KMA, Mercedes, Mitsubishi, Nissan, PCNA, and

Limited progress has been made on the settlement front to date. No

Case No. 2:14-cv-02454-JAK (JEMx)

Case 2:14-cv-02962-JAK-JEM Document 78 Filed 04/13/15 Page 3 of 18 Page ID #:4398

Defendants agree with Plaintiffs description of the selection of mediators.

21 However, Defendants oppose Plaintiffs proposed timeline requiring mediation

Case No. 2:14-cv-02454-JAK (JEMx)

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21 Plaintiff and that mediation is unnecessary.

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Status of Other Proceedings Involving the Patents-in-Suit

The only reexamination proceedings of which Plaintiff is aware were initiated

16 certain patents-in-suit, but, to date, no reviews have been instituted in response to

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VWGoA filed three reexamination proceedings challenging the 486, 601

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19 rejected in an ex parte reexamination filed by VWGoA (Control No. 90/013,384).

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Office action rejecting all challenged claims

Signals response submitted April 13, 2015

Final office action expected by August 2015

Filed March 16, 2015

Decision on request expected by September

Final written decision expected by September

Filed April 3, 2015

Decision on request expected by midOctober, 2015

Final written decision expected by midOctober, 2016

VWGoA filed a request for reexamination on October 27, 2014, challenging

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14 rejected in a reexamination filed by VWGoA (Control No. 90/013,385). These

Office action rejecting all challenged claims

Signals response due April 20, 2015

Final office action expected by August 2015

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Signals response due June 18, 2015

Decision on request expected by September

Final written decision expected by September

No. IPR2015-00861 Ford

Filed March 13, 2015

Decision on request expected by September

Final written decision expected by September

No. IPR2015-00941 Mercedes

Decision on request expected by October 2,

Final written decision expected by October 2,

Filed March 25, 2015

No. IPR2015-01002 Honda