Trials@uspto.gov
`571.272.7822
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`
`Paper 7
`Filed: September 2, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`AMERICAN HONDA MOTOR CO., INC., HONDA OF AMERICA MFG.,
`INC., HONDA PATENTS & TECHNOLOGIES NORTH AMERICA, LLC,
`and HONDA MOTOR CO., LTD,
`Petitioner,
`
`VOLKSWAGEN GROUP OF AMERICA, INC.,
`Petitioner,
`
`v.
`
`SIGNAL IP, INC.,
`Patent Owner.
`
`IPR2015-01003 (Patent No. 5,732,375)
`IPR2015-01004 (Patent No. 6,012,007)
`IPR2015-01116 (Patent No. 6,012,007)
`
`
`
`
`
`Before MEREDITH C. PETRAVICK, JEREMY M. PLENZLER, and
`JAMES A. TARTAL, Administrative Patent Judges.
`
`PETRAVICK, Administrative Patent Judge.
`
`
`
`
`
`
`
`ORDER
`37 C.F.R. § 42.5
`Conduct of the Proceeding
`
`
`571.272.7822
`
`
`
`
`
`Paper 7
`Filed: September 2, 2015
`
`
`
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`AMERICAN HONDA MOTOR CO., INC., HONDA OF AMERICA MFG.,
`INC., HONDA PATENTS & TECHNOLOGIES NORTH AMERICA, LLC,
`and HONDA MOTOR CO., LTD,
`Petitioner,
`
`VOLKSWAGEN GROUP OF AMERICA, INC.,
`Petitioner,
`
`v.
`
`SIGNAL IP, INC.,
`Patent Owner.
`
`IPR2015-01003 (Patent No. 5,732,375)
`IPR2015-01004 (Patent No. 6,012,007)
`IPR2015-01116 (Patent No. 6,012,007)
`
`
`
`
`
`Before MEREDITH C. PETRAVICK, JEREMY M. PLENZLER, and
`JAMES A. TARTAL, Administrative Patent Judges.
`
`PETRAVICK, Administrative Patent Judge.
`
`
`
`
`
`
`
`ORDER
`37 C.F.R. § 42.5
`Conduct of the Proceeding
`
`
`
`IPR2015-01003 (Patent No. 5,732,375)
`IPR2015-01004 (Patent No. 6,012,007)
`IPR2015-01116 (Patent No. 6,012,007)
`
`
`
`U.S. Patent No. 5,732,375 (“the ’375 patent”) and U.S. Patent No.
`6,012,007 (“the ’007 patent”) are the subject of related case Signal IP, Inc. v.
`American Honda Motor Co., Inc. et al., No. 2:14-cv-02454 in the U.S.
`District Court for the Central District of California. On May 22, 2015, the
`U.S. District Court entered a Partial Judgement of Invalidity. Ex. 3001. The
`Partial Judgement of Invalidity states that the Plaintiff, Signal IP, Inc., and
`defendants, which include all Petitioners in these proceedings, filed a Joint
`Stipulation For Entry of Partial Final Judgement of Invalidity. Id. at 1. The
`Partial Judgement of Invalidity states:
`
`Based on the stipulation of the parties, and good cause
`appearing, the parties’ joint stipulation is APPROVED and SO
`ORDERED. Accordingly, IT IS HEREBY ORDERED,
`ADJUDGED AND DECREED THAT:
`. . .
`Claim 1 and 7 of U.S. Patent No. 5,732,375 (“the
`2.
`
`’375 patent”) are invalid as indefinite under 35 U.S.C. § 112,
`paragraph 2.
`
`3.
`Claims 1, 8, 9, 17, 18, 19, and 20 of U.S. Patent
`No. 6,012,007 (“the ’007 patent”) are invalid as indefinite under
`35 U.S.C. § 112, paragraph 2.
`
`
`Id. at 1-2.
`Claims 1 and 7 of the ’375 patent are the only claims challenged in
`IPR2015-01003. Claims 1, 9, 17, 18, 19, and 20 of the ’007 are among the
`claims challenged in IPR2015-01004 and IPR2015-01116. Should an inter
`partes review be instituted, the ’375 patent and the ’007 patent appear to
`expire during the review. “[T]he Board’s review of the claims of an expired
`
`2
`
`
`
`IPR2015-01003 (Patent No. 5,732,375)
`IPR2015-01004 (Patent No. 6,012,007)
`IPR2015-01116 (Patent No. 6,012,007)
`
`
`patent is similar to that of a district court’s review.” In re Rambus, Inc., 694
`F.3d 42, 46 (Fed. Cir. 2012).
`After discovering the Partial Judgement of Invalidity, which refers to
`the Joint Stipulation, the Board initiated a conference call to inquire about
`the parties’ stipulation and to inquire as to what affect the parties believe the
`stipulation has on these proceedings. The conference call was held between
`counsel for the parties and Judges Petravick, Tartal, and Plenzler on
`September 1, 2015.
`Based upon the information presented by the parties during the call,
`the Board determined that additional briefing is required. In each
`proceeding, Petitioner and Patent Owner should file a paper, no more than
`10 pages, explaining the stipulation and what affect the stipulation has on
`that proceeding, or why it does not affect that proceeding. In addition, the
`parties should address the following questions:
`(1) Whether the party contends that the challenged claims that are the
`subject of the stipulation are indefinite under 35 U.S.C. § 112, second
`paragraph, with an explanation in support of the party’s contention.
`(2) For IPR2015-01004 and IPR2015-01116, if the challenged
`independent claims are indefinite, whether the party contends such
`indefiniteness does, or does not, impact the challenged dependent
`claims that are not the subject of the stipulation, with an explanation
`in support of the party’s contention and an explanation of the impact.
`(3) Whether the party contends that if the Board determines that the
`parties stipulated that the claims are invalid for being indefinite, the
`
`3
`
`
`
`IPR2015-01003 (Patent No. 5,732,375)
`IPR2015-01004 (Patent No. 6,012,007)
`IPR2015-01116 (Patent No. 6,012,007)
`
`
`Board should exercise its discretion, pursuant to 35 U.S.C. § 314 to
`deny the Petition with respect to those claims or whether the Board
`should terminate the proceeding pursuant to 37 C.F.R. § 42.72.
`(4) For IPR2015-01003, if the Board determines that the parties
`stipulated that claims 1 and 7 are invalid for being indefinite, whether
`Patent Owner’s stipulation should be considered a request for adverse
`judgment because the stipulation is a “disclaimer of a claim such that
`the party has no remaining claim in the trial,” pursuant to 37 C.F.R.
`§ 42.73.
`Each party also should file any information upon which it intends to
`
`rely with respect to the impact of the Joint Stipulation or to the issue of
`whether the claims are definite and should file any information that is
`inconsistent with its position advanced in the Joint Stipulation or
`inconsistent with its contentions regarding the issue of definiteness. Patent
`Owner should file a copy of the Joint Stipulation For Entry of Partial Final
`Judgement of Invalidity filed in the related U.S. District Court case.
`
`The parties should file the papers and relevant information no later
`September 10, 2015.
`
`It is so ORDERED.
`
`4
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`IPR2015-01003 (Patent No. 5,732,375)
`IPR2015-01004 (Patent No. 6,012,007)
`IPR2015-01116 (Patent No. 6,012,007)
`
`
`
`5
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`
`
`PETITIONER:
`
`Joshua A. Griswold
`Daniel Smith
`Fish & Richardson P.C.
`griswold@fr.com
`IPR15626-0019IP1@fr.com
`
`Michael J. Lennon
`Clifford A. Ulrich
`Michelle Carniaux
`Kenyon & Kenyon LLP
`ptab@kenyon.com
`
`
`
`PATENT OWNER:
`
`Tarek N. Fahmi
`Holly J. Atkinson
`Ascenda Law Group, PC
`tarek.fahmi@ascendalaw.com
`holly.atkinson@ascendalaw.com
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