American Honda Motor Co., Inc.v.SIGNAL IP, INC.Download PDFPatent Trial and Appeal BoardNov 24, 201509648972 (P.T.A.B. Nov. 24, 2015) Copy Citation Trials@uspto.gov Paper No. 12 571-272-7822 Entered: November 24, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ AMERICAN HONDA MOTOR CO., INC., HONDA OF AMERCIA MFG., INC., HONDA PATENTS & TECHNOLOGIES NORTH AMERICA, LLC, and HONDA MOTOR CO., LTD., Petitioner, v. SIGNAL IP, INC., Patent Owner. ____________ Case IPR2015-01005 Patent 6,434,486 B1 ____________ Before JOSIAH C. COCKS, MITCHELL G. WEATHERLY, and CHARLES J. BOUDREAU, Administrative Patent Judges. BOUDREAU, Administrative Patent Judge. JUDGMENT AND FINAL WRITTEN DECISION 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73 IPR2015-01005 Patent 6,434,486 B1 2 I. BACKGROUND The Board instituted inter partes review of claims 1, 2, 6–9, 13, 14, 21, 22, 26–29, 33, and 34 of U.S. Patent No. 6,434,486 B1 (“the ’486 patent”) on September 18, 2015. Paper 8. On November 11, 2015, Signal IP, Inc. (“Patent Owner”) filed Patent Owner’s Second Updated Mandatory Notices pursuant to 37 C.F.R § 42.8(a)(2). Paper 11 (“Updated Notices”). In its Updated Notices, Patent Owner indicates that: (1) Reexamination Certificate US 6,434,486 C1 issued on November 6, 2015, cancelling claims 21, 26, and 28 of the ’486 patent and adding new claims 41–77; (2) Patent Owner filed a statutory disclaimer with respect to claims 1, 2, 6–9, 13, 14, 22, 23, 27, 29, 30, 33, 34, and 35 of the ’486 patent on November 10, 2015; and (3) accordingly, there are no claims for which trial was instituted remaining in the ’486 patent. Paper 11, 2.1 II. DISCUSSION A party may request judgment against itself at any time during a proceeding. 37 C.F.R. § 42.73(b). Under the Rules, actions construed as a request for entry of adverse judgment include “[c]ancellation or disclaimer of a claim such that the party has no remaining claim in the trial.” 37 C.F.R. § 42.73(b)(2). Here, claims 21, 26, and 28 of the ’486 patent were cancelled in Reexamination Certificate US 6,434,486 C1 (Ex. 2004), and Patent Owner subsequently disclaimed, under 37 C.F.R. § 1.321, claims 1, 2, 6–9, 13, 14, 22, 23, 27, 29, 30, 33, 34, and 35 of the ’486 patent (Ex. 2005). 1 Patent Owner filed copies of the reexamination certificate and statutory disclaimer referenced in its Updated Notices as Exhibits 2004 and 2005, respectively. Paper 11, 2. IPR2015-01005 Patent 6,434,486 B1 3 Because Patent Owner disclaimed, inter alia, claims 1, 2, 6–9, 13, 14, 22, 27, 29, 33, and 34 of the ’486 patent, constituting all of the claims involved in this trial that had not already been cancelled in the reexamination certificate, we construe Patent Owner’s statutory disclaimer as a request for entry of adverse judgment. III. CONCLUSION Having reviewed Reexamination Certificate US 6,434,486 C1 and Patent Owner’s statutory disclaimer with respect to claims 1, 2, 6–9, 13, 14, 22, 23, 27, 29, 30, 33, 34, and 35 of the ’486 patent, we determine that entry of judgment against Patent Owner with respect to claims 1, 2, 6–9, 13, 14, 21, 22, 26–29, 33, and 34 of the ’486 patent is appropriate. IV. ORDER Accordingly, it is ORDERED that adverse judgment is entered under 37 C.F.R. § 42.73(b) against Patent Owner with respect to claims 1, 2, 6–9, 13, 14, 21, 22, 26–29, 33, and 34 of the ’486 patent; and FURTHER ORDERED that this constitutes a final written decision under 35 U.S.C. § 318(a). IPR2015-01005 Patent 6,434,486 B1 4 For PETITIONER: Joshua A. Griswold Daniel Smith Fish & Richardson P.C. griswold@fr.com IPR15625-0021IP1@fr.com For PATENT OWNER: Tarek N. Fahmi Holly J. Atkinson Ascenda Law Group, PC tarek.fahmi@ascendalaw.com holly.atkinson@ascendalaw.com patents@ascendalaw.com Copy with citationCopy as parenthetical citation