- Netflix, Inc.Adverse judgmentPTAB · Mar 18, 2024 · IPR2022-01568 · APJ Barbara A Parvis · IPR · Adverse judgment
The Board denied Netflix’s requests for adverse judgment and to expunge Patent Owner’s papers, then dismissed and terminated the proceeding without a final written decision.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentDenied
“(b) Request for adverse judgment. A party may request judgment against itself at any time during a proceeding. Actions construed to be a request for adverse judgment include: (1) Disclaimer of the involved application or patent; (2) Cancellation or disclaimer of a claim such that the party has no remaining claim in the trial; (3) Concession of unpatentability or derivation of the contested subject matter; and (4) Abandonment of the contest. 37 C.F.R. § 42.73(b). Based on the record before us, we do not find that any action has been taken by Mr. Valjakka or Suomen Biisi Oy during this proceeding that is properly construed as a request for adverse judgment. Mr. Valjakka has not taken any of the actions set forth in 37 C.F.R. § 42.73(b)(1)–(4). Mr. Valjakka has not filed or requested a disclaimer of the patent or cancellation of any claim. Mr. Valjakka also has not conceded unpatentability or abandoned the contest. To the contrary, Mr. Valjakka filed a Patent Owner Response (Paper 9), a Sur-reply (Paper 15), and a Request for Oral Argument (Paper 16). Additionally, following the District Court’s Order, Mr. Valjakka seeks to continue to act as the patent owner in this proceeding. Resp. Br. 4.” slip op. at 5
- PTAB / AIA Trials › Real party in interest / privityOther
“The circumstances of the instant proceeding starkly contrast those in FedEx, in which the district court granted a motion to dismiss without determining patent ownership. FedEx, IPR2017-01786, Paper 28, 16. In the instant proceeding, Netflix and Mr. Valjakka agree that we should not make an independent determination as to whether Mr. Valjakka has established that he has standing to take action as patent owner in these proceedings because the proper venue is the District Court, which already decided against Mr. Valjakka and granted Netflix’s Motion for Summary Judgment. Ex. 3001, 14. Based on the record before us, we decline to make an independent determination as to whether Mr. Valjakka has standing to act as a patent owner in this proceeding. Accordingly, we deny Netflix’s request to terminate this proceeding and expunge Mr. Valjakka’s papers and exhibits on the basis of our making an independent determination that Mr. Valjakka does not have standing to act as a patent owner.” slip op. at 9
NonePatents in suitUS 8,495,167 - Bank Of America, N.A. / PNC Financial Services Group, Inc. et al. v. Intellectual Ventures II LLCAdverse judgmentPTAB · Aug 18, 2014 · CBM2014-00031 · APJ Thomas L Giannetti · CBM · Adverse judgment
The Board granted the Patent Owner’s unopposed motion to amend, entered adverse judgment, and ordered claims 10-18 cancelled.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“during a proceeding. 37 C.F.R. § 42.73(b). Cancellation or disclaimer of a claim such that a party has no remaining claims in the trial is an action construed as a request for adverse judgment. Id. § 42.73(b)(2). Here, Patent Owner has moved to cancel each claim for which review is sought. Paper 19 at 3. The motion is unopposed. Under these circumstances, the entry of judgment adverse to the Patent Owner and cancellation of the claims as requested is appropriate.” slip op. at 2
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted
“Here, Patent Owner has moved to cancel each claim for which review is sought. Paper 19 at 3. The motion is unopposed. Under these circumstances, the entry of judgment adverse to the Patent Owner and cancellation of the claims as requested is appropriate. CONCLUSION Patent Owner’s request for entry of adverse judgment is granted. It is, therefore, ORDERED that Patent Owner’s motion to amend is granted; FURTHER ORDERED that adverse judgment against the Patent Owner is” slip op. at 2
NonePatents in suitUS 6,182,894
Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.