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  • PTAB · Apr 14, 2017 · IPR2016-00911 · APJ Josiah C Cocks · IPR · Adverse judgment

    The Board granted Kolcraft’s request for adverse judgment and ordered claims 46–50 cancelled.

    RulingsAdverse judgment
    • Adverse judgmentAdverse judgmentGranted

      “unpatentability applied to claims 46–50 of U.S. Patent No. 7,458,114 B2 (“the ’114 patent”). Paper 8, 18. Patent Owner, Kolcraft Enterprises, Inc. (“Kolcraft”), now requests judgment against itself pursuant to 37 C.F.R. § 42.73(b).1 Paper 13. As a part of that request, Kolcraft also seeks cancellation of claims 46–50 of the ’114 patent. Id. Kolcraft’s request for adverse judgment against it is granted. In so granting that request, and as sought by Kolcraft, no claims of the ’114 patent remain in this proceeding. It is ORDERED that Kolcraft’s request for adverse judgment pursuant to 37 C.F.R. § 42.73(b) is granted; FURTHER ORDERED that claims 46–50 of the ’114 patent will be cancelled;” slip op. at 2

    None
    Patents in suitUS 7,458,114
  • PTAB · Feb 2, 2015 · IPR2014-00562 · APJ Lynne E Pettigrew · IPR · Adverse judgment

    The Board entered adverse judgment against Patent Owner in both proceedings and cancelled claims 1–20, 74–80, and 89–94.

    RulingsAdverse judgment
    • Adverse judgmentAdverse judgmentGranted

      “Adverse Judgment Pursuant to 37 C.F.R. § 42.73(b)(4) in each of the two proceedings. IPR2014-00562, Paper 24; IPR2015-00544, Paper 7. Under 37 C.F.R. § 42.73(b), a party may request judgment against itself at any time during a proceeding. Actions construed to be a request for adverse judgment include abandonment of the contest. 37 C.F.R. § 42.73(b)(4). Patent Owner acknowledges that, in accordance with its requests, the Board will terminate the proceedings and cancel all challenged claims. IPR2014-00562, Paper 24, 1; IPR2015-00544, Paper 7, 1. Patent Owner further acknowledges that its actions subject it to the estoppel provisions of 37 C.F.R. § 42.73(d). IPR2014-00562, Paper 24, 1; IPR2015-00544, Paper 7, 1. ORDER Accordingly, it is: ORDERED that adverse judgment is entered against Patent Owner” slip op. at 2

    • PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Other

      “FURTHER ORDERED that Patent Owner’s Motion to Stay Co- Pending Ex Parte Reexamination Pursuant to 35 U.S.C. § 315(d) and 37 C.F.R. § 42.122 (IPR2014-00562, Paper 17) is dismissed as moot.” slip op. at 3

    None
    Patents in suitUS 7,330,817
  • PTAB · Feb 2, 2015 · IPR2015-00544 · APJ Lynne E Pettigrew · IPR · Adverse judgment

    The Board entered adverse judgment against the patent owner in both proceedings, canceled claims 1–20, 74–80, and 89–94, and dismissed the stay motion as moot.

    RulingsAdverse judgment
    • Adverse judgmentAdverse judgmentGranted

      “Adverse Judgment Pursuant to 37 C.F.R. § 42.73(b)(4) in each of the two proceedings. IPR2014-00562, Paper 24; IPR2015-00544, Paper 7. Under 37 C.F.R. § 42.73(b), a party may request judgment against itself at any time during a proceeding. Actions construed to be a request for adverse judgment include abandonment of the contest. 37 C.F.R. § 42.73(b)(4). Patent Owner acknowledges that, in accordance with its requests, the Board will terminate the proceedings and cancel all challenged claims. IPR2014-00562, Paper 24, 1; IPR2015-00544, Paper 7, 1. Patent Owner further acknowledges that its actions subject it to the estoppel provisions of 37 C.F.R. § 42.73(d). IPR2014-00562, Paper 24, 1; IPR2015-00544, Paper 7, 1. ORDER Accordingly, it is: ORDERED that adverse judgment is entered against Patent Owner” slip op. at 2

    • PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Other

      “FURTHER ORDERED that Patent Owner’s Motion to Stay Co- Pending Ex Parte Reexamination Pursuant to 35 U.S.C. § 315(d) and 37 C.F.R. § 42.122 (IPR2014-00562, Paper 17) is dismissed as moot.” slip op. at 3

    None
    Patents in suitUS 7,330,817
  • PTAB · Oct 20, 2014 · IPR2014-00590 · APJ Kristen L Droesch · IPR · Adverse judgment

    Adverse judgment was entered against Patent Owner on claim 31, and its request to cancel that claim was granted.

    RulingsAdverse judgment
    • Adverse judgmentAdverse judgmentGranted

      “6,095,661 on September 3, 2014. Paper 23. Pursuant to our authorization, Patent Owner filed a Motion for Adverse Judgment on October 17, 2014, requesting cancellation of claim 31, the only claim on which trial was instituted. Paper 28. Accordingly, it is ORDERED that judgment under 37 C.F.R. § 42.73(b) is entered against Patent Owner with respect to claim 31; FURTHER ORDERED that this constitutes a final written decision under 35 U.S.C. § 318(a); and FURTHER ORDERED that the request to cancel claim 31 is granted.” slip op. at 1

    None
    Patents in suitUS 6,095,661
  • PTAB · Apr 29, 2014 · IPR2013-00610 · APJ Kristen L Droesch · IPR · Adverse judgment

    The Board entered adverse judgment against the Patent Owner and granted cancellation of instituted claims 1, 2, 4, 6-13, 15, 17-26, 29, 30, 40, 41, and 48.

    RulingsAdverse judgment
    • Adverse judgmentAdverse judgmentGranted

      “29, 30, 40, 41, and 48 of U.S. Patent No. 6,095,661 on March 7, 2014. Paper 10. In response to a request by Patent Owner during the initial conference for this case on April 10, 2014, we authorized Patent Owner to file a motion to request cancellation of the claims on which trial was instituted, or request adverse judgment by no later than April 17, 2014. Paper 12. We further authorized Petitioners to file, no later than April 24, 2014, any opposition to Patent Owner’s motion. Id. On April 16, 2014, Patent Owner filed a Motion for Adverse Judgment, requesting cancellation of claims 1, 2, 4, 6-13, 15, 17-26, 29, 30, 40, 41, and 48, all of the claims on which trial was instituted. Paper 13. Petitioners did not file an opposition to Patent Owner’s motion. Accordingly, it is ORDERED that judgment under 37 C.F.R. § 42.73(b) is entered against Patent Owner with respect to claims 1, 2, 4, 6-13, 15, 17-26, 29, 30, 40, 41, and 48;” slip op. at 2

    None
    Patents in suitUS 6,095,661
  • PTAB · Apr 29, 2014 · IPR2013-00611 · APJ Kristen L Droesch · IPR · Adverse judgment

    The Board entered adverse judgment against Patent Owner and granted cancellation of instituted claims 1-6, 11-16, and 24-39.

    RulingsAdverse judgment
    • Adverse judgmentAdverse judgmentGranted

      “24-39 of U.S. Patent No. 6,488,390 B1 on March 7, 2014. Paper 8. In response to a request by Patent Owner during the initial conference for this case on April 10, 2014, we authorized Patent Owner to file a motion to request cancellation of the claims on which trial was instituted, or request for adverse judgment by no later than April 17, 2014. Paper 10. We further authorized Petitioners to file, no later than April 24, 2014, any opposition to the Patent Owner’s motion. Id. On April 16, 2014, Patent Owner filed a Motion for Adverse Judgment, requesting cancellation of claims 1-6, 11-16, and 24-39, all of the claims on which trial was instituted. Paper 11. Petitioners did not file an opposition to Patent Owner’s motion. Accordingly, it is ORDERED that judgment under 37 C.F.R. § 42.73(b) is entered against Patent Owner with respect to claims 1-6, 11-16, and 24-39;” slip op. at 2

    None
    Patents in suitUS 6,488,390
  • PTAB · Mar 21, 2014 · IPR2013-00122 · APJ Georgianna W Braden · IPR · Adverse judgment

    The Board entered adverse judgment against Patent Owner, granted cancellation of claims 1–6, and terminated the inter partes review.

    RulingsAdverse judgment
    • Adverse judgmentAdverse judgmentGranted

      “Under 35 C.F.R. § 42.73(b), a party may request judgment against itself at any time during a proceeding. Furthermore, under 37 C.F.R. § 42.73(b)(2), actions construed as a request for entry of adverse judgment include cancellation of a claim such that the party has no remaining claim in the trial. Patent Owner has not only requested cancellation of all claims involved in this inter partes review, such that after the cancellation it will have no remaining claim in the trial, but also expressly requested entry of adverse judgment. Patent Owner’s request to cancel claims 1-6 and request for entry of adverse judgment are granted.” slip op. at 2

    None
    Patents in suitUS 7,909,641
  • PTAB · Feb 26, 2014 · IPR2014-00122 · APJ Thomas L Giannetti · IPR · Adverse judgment

    The Board entered adverse judgment against Patent Owner and cancelled challenged claims 5–16 after Patent Owner requested judgment and cancelled them.

    RulingsAdverse judgment
    • Adverse judgmentAdverse judgmentGranted

      “DISCUSSION A party may request entry of adverse judgment against itself at any time during a proceeding. 37 C.F.R. § 42.73(b). Here, Patent Owner has cancelled each claim for which inter partes review is sought. Paper 6 at 4. 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

    None
    Patents in suitUS 6,941,543
  • PTAB · Jan 30, 2014 · IPR2013-00408 · APJ Christopher L Crumbley · IPR · Adverse judgment

    The Board granted the parties’ joint motion and terminated IPR2013-00408 after settlement, without a final written decision.

    RulingsAdverse judgment
    • Adverse judgmentAdverse judgmentGranted

      “The parties have requested that this trial proceeding be terminated pursuant to a settlement. On January 22, 2014, the Board authorized the parties to file a joint request to terminate and to file the settlement agreement as business confidential under 37 C.F.R. 42.74(c). Paper 11. The parties filed the joint motion to terminate pursuant to 35 U.S.C. § 317 on January 27, 2014. Paper 12. Accompanying the motion, the parties filed a true copy of a settlement agreement along with a joint request to treat the settlement agreement as business confidential, to be kept separate from the patent file pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74. Paper 13; Ex. 1008. A decision by the Board to institute a trial was entered on December 30, 2013. Paper 9. This matter, however, is in its preliminary stages. In their joint motion, the parties represent that they jointly requested that the related district court litigation involving Patent 5,563,377, Belden Inc. v. Hitachi Cable America Inc., et al., Case No. 1:12-cv-1724 (S.D. Ind.), be dismissed with prejudice. Under these circumstances, the Board determines that it is appropriate to enter judgment and terminate the trial without rendering a final written decision. 37 C.F.R. § 42.72. Therefore, the joint motion to terminate the proceeding is granted.” slip op. at 1

    None
    Patents in suitUS 5,563,377

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