`571-272-7822
`
`
`
`
`
`Paper No. 21
`Entered: February 6, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HYUNDAI MOTOR COMPANY,
`Petitioner,
`
`v.
`
`AMERICAN VEHICULAR SCIENCES LLC,
`Patent Owner.
`____________
`
`Case IPR2014-00629
`Case IPR2015-00176
`Patent 8,036,788 B2
`
`____________
`
`
`
`Before JAMESON LEE, BARBARA A. PARVIS, and
`GREGG I. ANDERSON, Administrative Patent Judges.
`
`ANDERSON, Administrative Patent Judge.
`
`
`
`
`
` DECISION
`Denial of Request for Adverse Judgment
`37 C.F.R. § 42.73
`
`
`
`
`1
`
`
`
`IPR2014-00629 and IPR2015-00176
`Patent 8,036,788 B2
`
`
`On January 30, 2015, the Patent Owner, American Vehicular Sciences
`
`LLC (“AVS”), indicated it “abandons this trial” of claims 1, 2, 3, 4, 5, 6, 7,
`
`13 and 20 of United States Patent No. 8,036,788 (the “’788 Patent”), all of
`
`the involved claims in this inter partes review, and requested entry of
`
`adverse judgment. Paper 20.
`
`Under 35 U.S.C. § 42.73(b), a party may request judgment against
`
`itself at any time during a proceeding. AVS, however, included the
`
`following language in its request:
`
`this IPR2014-00629 &
`Patent Owner’s abandonment of
`IPR2015-00176 is: (1) not a “[d]isclaimer of the involved
`application or patent” under 37 C.F.R. § 42.73(b)(1); (2) not a
`concession that “cancellation or disclaimer of” claims 1, 2, 3, 4,
`5, 6, 7, 13 and 20 of the 788 Patent is warranted under 37
`C.F.R. § 42.73(b)(2); and (3) not a “[c]oncession of
`unpatentability or derivation of the contested subject matter”
`under 37 C.F.R. § 42.73(b)(3). Specifically, Patent Owner’s
`request is made without prejudice to the remaining claims of
`the 788 Patent and without prejudice to any application or
`patent that claims priority to the 788 Patent.
`
`Paper 20 (emphasis omitted).
`
`AVS’s inclusion of the language above introduces ambiguity because
`
`AVS indicates it is not conceding that cancellation of claims is warranted.
`
`The result of granting a request for adverse judgment is that all of the
`
`involved claims in the inter partes review are cancelled. See 37
`
`C.F.R. § 42.73(b). Additionally, AVS conditions its request as without
`
`prejudice to other claims not at issue in this proceeding. We cannot make a
`
`determination regarding claims not involved in this inter partes review. A
`
`request for adverse judgment should not be made with conditions imposed
`
`on what effects it should or should not have on other claims.
`
`We, therefore, deny AVS’s request for adverse judgment, without
`
`
`
`IPR2014-00629 and IPR2015-00176
`Patent 8,036,788 B2
`
`prejudice to AVS refiling its request without any conditional language, such
`
`as that quoted above, that seeks to limit the impact of the entry of adverse
`
`judgment.
`
`Accordingly, it is:
`
` Order
`
`ORDERED that AVS’s request for entry of adverse judgment is
`
`denied;
`
`FURTHER ORDERED that AVS may refile its request.
`
`
`
`For PETITIONER in IPR2015-00176:
`
`Edward Naidich
`Christopher Kurpinski
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`Ed.Naidich@finnegan.com
`Christopher.Kurpinski@finnegan.com
`
`
`For PATENT OWNER:
`
`Thomas J. Wimbiscus
`Scott P. McBride
`Stephanie F. Samz
`MCANDREWS HELD & MALLOY, LTD.
`twimbiscus@mcandrews-ip.com
`smcbride@mcandrews-ip.com
`ssamz@mcandrews-ip.com
`
`
`
`
`
`
`
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