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

Patent Trial and Appeal BoardApr 14, 2016

10214048 (P.T.A.B. Apr. 14, 2016)

Trials@uspto.gov Paper 16 571-272-7822 Date: April 14, 2016 UNITED STATES PATENT AND TRADEMARK OFFICE _____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ AMERICAN HONDA MOTOR CO., INC., Petitioner, v. SIGNAL IP, INC., Patent Owner. ____________ Case IPR2015-01002 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) IPR2015-01002 Patent 6,775,601 B2 2 I. BACKGROUND Petitioner, American Honda Motor Co., Inc., filed a Petition for inter partes review of claims 1–17 of U.S. Patent 6,775,601 B2 (the “’601 patent”) on April 3, 2015. Paper 2. Patent Owner, Signal IP, Inc. (“Signal IP”), filed a Patent Owner’s Preliminary Response on July 13, 2015. Paper 6. We instituted trial as to claims 8–11, 13, 15, and 17 of the ’601 patent on October 1, 2015.1 Paper 10. Signal IP subsequently filed a Patent Owner’s Response on December 15, 2015. Paper 14 (“Response” or “PO Resp.”). In the Response, Signal IP represented 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. 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 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 We did not institute trial as to claims 1–7, 12, 14, and 16 because those claims had been disclaimed by Signal IP. See Paper 10, 2. IPR2015-01002 Patent 6,775,601 B2 3 Pursuant to 37 C.F.R. § 42.73(b), we construe cancellation of all claims involved 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 8–11, 13, 15, and 17 of the ’601 patent; and FURTHER ORDERED that this Order constitutes a Final Written Decision under 35 U.S.C. § 318(a). IPR2015-01002 Patent 6,775,601 B2 4 For PETITIONER: Joshua Griswold griswold@fr.com Daniel Smith IPR15625-0018IP1@fr.com For PATENT OWNER: Tarek N. Fahmi tarek.fahmi@ascendalaw.com

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