FCA US LLCv.JACOBS VEHICLE SYSTEMS, INC.

Patent Trial and Appeal Board

Oct 23, 2015

10408254 (P.T.A.B. Oct. 23, 2015)

Trials@uspto.gov Paper 9
571-272-7822 Entered: October 23, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

FCA US LLC,
Petitioner,
v.
JACOBS VEHICLE SYSTEMS, INC.,
Patent Owner.

Case IPR2015-01234
Patent No. 6,883,492 B2

Before MEREDITH C. PETRAVICK, BENJAMIN D. M. WOOD, and
RICHARD E. RICE, Administrative Patent Judges.
RICE, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
37 C.F.R. §§ 42.107(e), 42.108

INTRODUCTION
On May 20, 2015, FCA US LLC (“Petitioner”) filed a Petition
(Paper 1, “Pet.”) requesting an inter partes review of claims 38–42, 44,
and 45 (“the challenged Claims”) of U.S. Patent No. 6,883,492 B2
(Ex. 1001, “the ’492 Patent”). In the Petition, Petitioner provided notice of
IPR2015-01234
Patent 6,883,492 B2
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co-pending Reissue Application No. 14/260,250, relating to the ’492 Patent.
Pet. 46.
On September 2, 2015, Jacobs Vehicle Systems, Inc. (“Patent
Owner”) filed a Preliminary Response (Paper 8, “Prelim. Resp.”). In its
Preliminary Response, Patent Owner provided notice that challenged
claim 38 of the ’492 Patent had been disclaimed pursuant to 37 C.F.R.
§ 1.321(a); Patent Owner also set forth reasons why no inter partes review
should be instituted as to the other challenged claims. See Prelim. Resp. 1.
On October 5, 2015, Patent Owner sent an email to the Board
providing notice that the remainder of the challenged claims had been
disclaimed. Patent Owner further stated: “As no inter partes review will be
instituted based on disclaimed claims, there is no longer any claim requiring
resolution by the Board in this proceeding. 37 C.F.R. § 42.107(e).”
On October 6, the Board, by email, authorized Patent Owner to file a
motion for adverse judgment pursuant to 37 C.F.R. § 42.73(b)(2) based on
the statutory disclaimers. Patent Owner responded by email to the Board
stating that Patent Owner “[did] not intend to file a motion for adverse
judgment,” but rather “assume[d] that the [Petition] will eventually be
denied, as the Board no longer has jurisdiction.” This email was the first in
a series of emails from the parties to the Board in which Petitioner sought
adverse judgment pursuant to 37 C.F.R. § 42.73(b)(2) and Patent Owner
sought denial of the Petition pursuant to 37 C.F.R. §§ 42.107(e) and 42.108.
DISCUSSION
We have jurisdiction to consider the Petition under 35 U.S.C. § 314,
which provides that an inter partes review may not be instituted “unless . . .
there is a reasonable likelihood that the petitioner would prevail with respect
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Patent 6,883,492 B2
3
to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a).
We determine that Patent Owner has filed statutory disclaimers under
35 U.S.C. § 253(a) in compliance with 37 C.F.R. § 1.321(a), disclaiming all
of challenged claims 38–42, 44, and 45 of the ’492 Patent. Ex. 3001.
Accordingly, no inter partes review will be instituted based on the
challenged claims. See 37 C.F.R. § 42.107(e).
We further determine that Patent Owner’s statutory disclaimers,
which were filed prior to institution of a trial in this case, should not be
construed as a request for adverse judgment. Under 37 C.F.R. § 42.73(b),
“[a] party may request judgment against itself at any time during a
proceeding” and “[a]ctions construed to be a request for adverse judgment
include . . . (2) [c]ancellation or disclaimer of a claim such that the party has
no remaining claim in the trial” (emphasis added). The term “trial” in
37 C.F.R. § 42.73(b)(2) means “a contested case instituted by the Board
based upon a petition.” See 37 C.F.R. § 42.2. Nothing in 37 C.F.R.
§ 42.73(b)(2) requires us to construe Patent Owner’s statutory disclaimers as
a request for adverse judgment prior to institution of a trial.
ORDER
In consideration of the foregoing, it is hereby:
ORDERED that Petitioner’s Petition for an inter partes review of
claims 38–42, 44, and 45 of the ’492 Patent is denied, and no inter partes
review will be instituted pursuant to 35 U.S.C. § 314 as to any claim of the
’492 Patent on any of the grounds of unpatentability alleged by Petitioner in
the Petition.

IPR2015-01234
Patent 6,883,492 B2
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PETITIONER:
Frank Cimino
Steven Schwarz
FCA-JVS@venable.com
sjschwarz@venable.com

PATENT OWNER:
Andrew M. Riddles
Brian R. Pollack
Cecilia Zhang Stiber
ariddles@daypitney.com
bpollack@daypitney.com
cstiber@daypitney.com