Ford Motor Companyv.SIGNAL IP, INC.

Patent Trials and Appeals Board

Feb 18, 2016

10214048 - (D) (P.T.A.B. Feb. 18, 2016)

Trials@uspto.gov Paper 19
571-272-7822 Date: February 18, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

FORD MOTOR COMPANY,
Petitioner,

v.

SIGNAL IP, INC.,
Patent Owner.
____________

Case IPR2015-00860
Patent 6,775,601 B2
____________

Before JOSIAH C. COCKS, MITCHELL G. WEATHERLY, and
CHARLES J. BOUDREAU, Administrative Patent Judges.

COCKS, Administrative Patent Judge.

JUDGMENT AND FINAL WRITTEN DECISION
37 C.F.R. § 42.73 and 35 U.S.C. § 318(a)

IPR2015-00860
Patent 6,775,601 B2

2
I. BACKGROUND
Petitioner, Ford Motor Company, filed a Petition for inter partes
review of claims 1–17 of U.S. Patent 6,775,601 B2 (the “’601 patent”) on
March 13, 2015. Paper 1. Patent Owner, Signal IP, Inc. (“Signal IP”), filed
a Patent Owner’s Preliminary Response on June 18, 2015. Paper 5. We
instituted trial as to claims 1–17 of the ’601 patent on September 4, 2015.
Paper 7. Signal IP subsequently filed a Patent Owner’s Response on
November 25, 2015. Paper 16 (“Response” or “PO Resp.”). In the
Response, Signal IP represents that in a concurrent Reexamination of the
’601 patent (Control No. 90/013,385) it filed an amendment seeking to
cancel claims 8–11, 13, 15, and 17. PO Resp. 1. Signal IP also represents
that on the same day it filed a statutory disclaimer as to claims 1–7, 12, 14,
and 16. Id.1 On December 28, 2015, Signal IP filed a copy of an Ex Parte
Reexamination Certificate that issued in connection with the ’601 patent on
December 23, 2015. Ex. 2007. That Certificate indicates that claims 8–11,
13, 15, and 17 are cancelled. Id. at 1:15. Therefore, every claim subject to
this inter partes review has been either disclaimed or canceled, and no
claims remain in this trial.
II. ANALYSIS
As set forth in 37 C.F.R. § 42.73:
(b) Request for adverse judgment. A party may request
judgment against itself at any time during a proceeding. Actions
construed to be a request for adverse judgment include: . . .
(2) Cancellation or disclaimer of a claim such that the
party has no remaining claim in the trial.

1 The statutory disclaimer is entered in this proceeding as Exhibit 2005.
IPR2015-00860
Patent 6,775,601 B2

3
Pursuant to 37 C.F.R. § 42.73(b), we construe the disclaimer of claims
1–7, 12, 14, and 16 and cancellation of all remaining claims in this
proceeding as a request for adverse judgment. We grant that request and
enter judgment against Signal IP under 37 C.F.R. § 42.73.
III. ORDER
Accordingly, it is
ORDERED that judgment is entered under 37 C.F.R. § 42.73 against
Signal IP with respect to claims 1–17 of the ’601 patent; and
FURTHER ORDERED that this Order constitutes a Final Written
Decision under 35 U.S.C. § 318(a).
IPR2015-00860
Patent 6,775,601 B2

4

For PETITIONER:

Frank A. Angileri
BROOKS KUSHMAN P.C.
FPGP0117IPR1@brookskushman.com

Lissi Mojica
Kevin Greenleaf
DENTONS US LLP
iptdocketchi@dentons.com

For PATENT OWNER:

Tarek N. Fahmi
ASCENDA LAW GROUP, PC
tarek.fahimi@ascendalaw.com