`571-272-7822
`
`
` Paper No. 14
` Entered: November 24, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MERCEDES-BENZ USA, LLC,
`Petitioner,
`
`v.
`
`SIGNAL IP, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00890
`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
`
`
`
`
`
`
`IPR2015-00890
`Patent 6,434,486 B1
`
`
`I. BACKGROUND
`The Board instituted inter partes review of claims 21, 23, 26–28, 30,
`34, and 35 of U.S. Patent No. 6,434,486 B1 (“the ’486 patent”) on
`September 18, 2015. Paper 11. 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 13 (“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 13, 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 13, 2.
`
`
`
`2
`
`
`
`IPR2015-00890
`Patent 6,434,486 B1
`
`Because Patent Owner disclaimed, inter alia, claims 23, 27, 30, 34, and 35
`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 21, 23, 26–28, 30,
`34, and 35 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 21, 23, 26–28, 30,
`34, and 35 of the ’486 patent; and
`FURTHER ORDERED that this constitutes a final written decision
`under 35 U.S.C. § 318(a).
`
`
`
`
`3
`
`
`
`IPR2015-00890
`Patent 6,434,486 B1
`
`PETITIONER:
`
`Scott W. Doyle
`Jonathan R. DeFosse
`Fried, Frank, Harris, Shriver & Jacobson LLP
`scott.doyle@friedfrank.com
`jonathan.defosse@friedfrank.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
`
`
`
`4
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
