American Honda Motor Co., Inc.v.SIGNAL IP, INC.

Patent Trial and Appeal Board

Nov 24, 2015

09648972 (P.T.A.B. Nov. 24, 2015)

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

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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

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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

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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