Hyundai Motor Co. v. American Vehicular Sciences LLC

Addressing a request for adverse judgment by the patent owner, the U.S Patent and Trademark Office’s (USPTO) Patent Trial and Appeal Board (PTAB or Board) denied patent owner’s request,  finding that the patent owner improperly attempted to place conditions on the adverse judgment.  Hyundai Motor Co. v. American Vehicular Sciences LLC, Case No. IPR2014-00629 and -00176 (PTAB, Feb. 6, 2015) (Anderson, APJ).

Hyundai filed a petition requesting an inter partes review (IPR) of claims of a patent owned by American Vehicular Sciences (AVS), a subsidiary of Acacia Research Group.  In a related earlier filed proceeding, Toyota filed a petition requesting an IPR on the same patent and similar claims.  After institution of the Toyota IPR, AVS voluntarily cancelled all but one of the claims at issue in that IPR.  The remaining claim was later found unpatentable by the PTAB.

Shortly after the ruling in the Toyota IPR, AVS moved, pursuant to 37 C.F.R. § 42.73(b), for adverse judgment against itself in the Hyundai IPR.

Specifically, AVS moved for adverse judgment under § 42.73(b)(4), seeking conditions, including that its abandonment was not a “[d]isclaimer of the involved application or patent” under 37 C.F.R. § 42.73(b)(1); not a concession that “cancellation or disclaimer of” claims 1, 2, 3, 4, 5, 6, 7, 13 and 20 of the ’778 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).  AVS insisted that its request was made without prejudice to the remaining claims of the patent and without prejudice to any application or patent that claims priority to the challenged patent.

The PTAB, however, did not accept the conditions, stating that the result of granting a request for adverse judgment is that all of the involved claims in the IPR are cancelled.  The PTAB stated further that a request for adverse judgment should not be made with conditions imposed on what effects it should or should not have on other claims.  Thus, the PTAB denied the request, but without prejudice.