- ROKU, Inc. v. Universal Electronics Inc.Adverse judgmentPTAB · Dec 28, 2023 · IPR2021-00263 · APJ Russell E Cass · IPR · Adverse judgment
The Board entered adverse judgment against Patent Owner on claims 1–11 because Patent Owner cancelled all challenged claims in a co-pending reexamination.
RulingsAdverse judgment- RehearingRehearing, grantedGranted
“After our Denial Decision, the Director issued an Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (“Interim Fintiv Guidance”)1, directing that “[t]he PTAB will not discretionarily deny petitions based on applying Fintiv to a 1 The Interim Fintiv Guidance is available at https://www.uspto.gov/ sites/default/files/documents/interim_proc_discretionary_denials_ aia_parallel_district_court_litigation_memo_20220621_.pdf. parallel ITC proceeding.” Interim Fintiv Guidance, 7. Following the Federal Circuit’s decision, we conducted a conference call with counsel for the parties and allowed the parties to submit additional briefing to address the status of the case, the status of any related proceedings, the Interim Fintiv Guidance, and any actions that should be taken by the panel at this point concerning this proceeding. Papers 16–18. After considering the parties’ arguments, we granted Petitioner’s Request for Rehearing on February 8, 2023, concluding that, in light of the Interim Fintiv Guidance, exercising discretion to deny institution under 35 U.S.C. § 314(a) was not warranted in this case. Paper 19, 5–12. We also determined that Petitioner had demonstrated a reasonable likelihood of success in proving that the challenged claims were unpatentable, and instituted an inter partes review of claims 1–11 of the ’317 patent with respect to all grounds set forth in the Petition. Id. at 12–37.” slip op. at 2
- Adverse judgmentAdverse judgmentGranted
“(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: . . . (2) Cancellation or disclaimer of a claim such that the party has no remaining claim in the trial. 37 C.F.R. § 42.73(b). In the ’074 Reexam, Patent Owner cancelled all of challenged claims 1–11, and the USPTO has issued a Reexamination Certificate indicating that these claims are cancelled. Ex. 2100, 2; Ex. 1046, 1:15. The Board has previously construed a patent owner’s cancellation in a reexamination of all claims challenged in a pending IPR as a request for adverse judgment under § 42.73(b). See Tarsco Bolted Tank Inc. v. Tank Connection, LLC, IPR2016-01634, Paper 16 at 2 (PTAB Aug. 24, 2017) (“Cancellation of claims 1–11” in an ex parte reexamination “is construed as a request for adverse judgment” in the corresponding IPR proceeding.); Mercedes-Benz USA, LLC v. Signal IP, Inc., IPR2015-00941, Paper 21 at 2–3 (PTAB Apr. 14, 2016) (“Pursuant to 37 C.F.R. § 42.73(b), we construe cancellation of all claims involved in this proceeding” in “a concurrent Reexamination of the” patent at issue “as a request for adverse judgment.”). We agree with the prior decisions in Tarsco and Mercedes-Benz that a patent owner’s cancellation of all challenged claims in an IPR in a co-pending ex parte reexamination is properly construed as a request for adverse judgment under 37 C.F.R. § 42.73(b). Consequently, we construe Patent Owner’s cancellation of all of the claims challenged in this IPR in the ’074 Reexam as a request for adverse judgment.” slip op. at 5
NonePatents in suitUS 10,600,317 - Apple Inc. v. Corephotonics Ltd.Adverse judgmentPTAB · Feb 11, 2022 · IPR2018-01146 · APJ Monica S Ullagaddi · IPR · Adverse judgment
The Board entered adverse judgment against Patent Owner on claims 6 and 14 after their disclaimer, then terminated the proceeding.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“II. ANALYSIS Actions construed as a request for 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). Here, Patent Owner has disclaimed claims 6 and 14 (along with unchallenged claims 3–5 and 8–11) of the ’712 patent under 35 U.S.C. § 253 according to the procedures set forth in 37 C.F.R. § 1.321(a). Ex. 3002, 1. We agree with Petitioner that 37 C.F.R. § 42.73(b) provides that the Board should construe Patent Owner’s statutory disclaimer to be a request that the Board enter adverse judgment against it with respect to claims 6 and 14, the only claims at issue, in this proceeding. Ex. 3001; see also Unified Patents, LLC v. Arsus, LLC, IPR2020-00948, Paper 18 at 2 (PTAB Jan. 27, 2021) (construing statutory disclaimer of all challenged claims as request for adverse judgment), aff’d, Case No. 2021- 1648, 2021 WL 5315423 (Fed. Cir. Nov. 16, 2021). Having reviewed the Disclaimer (Ex. 3002), we determine that entry of adverse judgment against Patent Owner with respect to claims 6 and 14 of the ’712 patent is appropriate. Claims 1, 2, 7, 12, 13, 15–17, and 19 are no longer part of this IPR proceeding because we made a final judgment with regard to these claims and that judgment has not been reversed or vacated. See 37 C.F.R. § 42.2 (“A decision is final only if it disposes of all necessary issues with regard to the party seeking judicial review, and does not indicate that further action is required.” (emphasis added)). As such, these claims are not “in the trial” within the meaning of 37 C.F.R. § 42.73(b)(2). The Federal Circuit remanded the Decision as to only claims 6 and 14. As such, our determination of adverse judgment does not apply to claims 1, 2, 7, 12, 13, 15–17, and 19. Patent Owner’s Disclaimer of claims 6 and 14 means that Patent Owner has no claims remaining in the present proceeding.” slip op. at 3
NonePatents in suitUS 9,568,712 - PTAB · Apr 4, 2016 · IPR2015-01469 · APJ Karl D Easthom · IPR · Adverse judgment
The Board entered adverse judgment against Gold Charm Limited and ordered claims 1 and 5 cancelled after Patent Owner abandoned the contest.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“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 requested to abandon the contest, which would be construed as a request for adverse judgment even apart from Patent Owner’s explicit request for adverse judgment. Id. § 42.73(b)(4). Under these circumstances, entry of judgment adverse to the Patent Owner and cancellation of claims 1 and 5 of the ʼ163 patent are appropriate. Patent Owner’s request for adverse judgment is granted.” slip op. at 2
NonePatents in suitUS 5,870,163 - LG Electronics, Inc. / LG Electronics U.S.A., Inc. et al. v. Cypress Semiconductor Corp.Adverse judgmentPTAB · May 22, 2015 · IPR2014-01342 · APJ Patrick M Boucher · IPR · Adverse judgment
The Board granted Patent Owner’s request for adverse judgment and entered judgment against Patent Owner on claims 1–4 after disclaimer of all claims in the proceeding.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“On May 12, 2015, Patent Owner filed an executed disclaimer of claims 1–4, i.e. all of the claims involved in this proceeding, with a representation that the disclaimer “will be electronically filed with the United States Patent and Trademark Office.” Paper 19. The disclaimer is construed as a request for adverse judgment. 37 C.F.R. § 42.73(b)(2) (“Actions construed to be a request for adverse judgment include . . . disclaimer of a claim such that the party has no remaining claim in the trial”). The request is granted. Accordingly, it is ORDERED that Patent Owner’s request for adverse judgment is granted; and FURTHER ORDERED that judgment is herein entered against Patent Owner with respect to claims 1–4.” slip op. at 1
NonePatents in suitUS 8,004,497 - Google, Inc v. Inventor Holdings, LLCAdverse judgmentPTAB · Sep 12, 2014 · CBM2014-00003 · APJ Miriam L Quinn · CBM · Adverse judgment
The Board granted Patent Owner’s request for adverse judgment and entered judgment of unpatentability against claims 1-4, 9-11, 19, 24, 27, 28, 31, 32, and 65 based on Patent Owner’s concession.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“in this proceeding under 37 C.F.R. § 42.73(b). Paper 33, “Req.”. Under section 42.73(b)(3), concession of unpatentability of the contested subject matter is construed as an adverse judgment. In its Request, Patent Owner concedes the unpatentability of and requests adverse judgment regarding claims 14, 911, 19, 24, 27, 28, 31, 32, and 65 of U.S. Patent No. 5,844,272. Req. 2. The conceded unpatentability addresses all the claims subject to this proceeding. Therefore, no other patent claims remain for trial in this covered business method review. Accordingly, it is hereby ORDERED that Patent Owner’s Request for Adverse Judgment under 37 C.F.R. § 42.73(b)(3) is hereby granted; and FURTHER ORDERED that a judgment of unpatentability is entered against claims 14, 911, 19, 24, 27, 28, 31, 32, and 65 of the U.S. Patent No. 5,884,272.” slip op. at 2
NonePatents in suitUS 5,884,272 - Google, Inc v. Inventor Holdings, LLCAdverse judgmentPTAB · Sep 12, 2014 · CBM2014-00002 · APJ Miriam L Quinn · CBM · Adverse judgment
The Board granted Patent Owner’s request for adverse judgment and entered judgment of unpatentability against claims 1, 2, 5, 10, 11, 23, 24, 32, and 33.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“in this proceeding under 37 C.F.R. § 42.73(b). Paper 37, “Req.”. Under section 42.73(b)(3), concession of unpatentability of the contested subject matter is construed as an adverse judgment. In its Request, Patent Owner concedes the unpatentability of and requests adverse judgment regarding claims 1, 2, 5, 10, 11, 23, 24, 32, and 33 of U.S. Patent No. 5,844,270. Req. 2. The conceded unpatentability addresses all the claims subject to this proceeding. Therefore, no other patent claims remain for trial in this covered business method review. Accordingly, it is hereby ORDERED that Patent Owner’s Request for Adverse Judgment under 37 C.F.R. § 42.73(b)(3) is hereby granted; and FURTHER ORDERED that a judgment of unpatentability is entered against claims 1, 2, 5, 10, 11, 23, 24, 32, and 33 of the U.S. Patent No. 5,884,270.” slip op. at 2
NonePatents in suitUS 5,884,270 - PTAB · Feb 19, 2014 · IPR2013-00149 · APJ Sally C Medley · IPR · Adverse judgment
The Board granted Patent Owner’s request for adverse judgment, entering judgment against Patent Owner and cancelling claims 1-3, 8, 10, 16-19, 21, 25-33, 35, and 36.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“JUDGMENT Request for Adverse Judgment 35 C.F.R. § 42.73(b) On February 14, 2014, Patent Owner filed a paper requesting adverse judgment along with a disclaimer of claims 1-3, 8, 10, 16-19, 21, 25-33, 35, and 36, all of the claims involved in this proceeding. Paper 24; Ex. 2004. Patent Owner’s disclaimer of claims 1-3, 8, 10, 16-19, 21, 25-33, 35, and 36, all of the claims involved in the proceeding, is construed as a request for entry of adverse judgment. 37 C.F.R. § 42.73(b)(2). The request is granted. Accordingly, it is ORDERED that Patent Owner’s request for adverse judgment is granted; FURTHER ORDERED that judgment is herein entered against Patent Owner with respect to claims 1-3, 8, 10, 16-19, 21, 25-33, 35, and 36; FURTHER ORDERED that claims 1-3, 8, 10, 16-19, 21, 25-33, 35, and 36 are herein cancelled; and” slip op. at 1
NonePatents in suitUS 6,455,138 - Crestron Electronics, Inc. v. Norman IP Holdings, LLCAdverse judgmentPTAB · Jan 17, 2014 · IPR2013-00278 · APJ Thomas L Giannetti · IPR · Adverse judgment
The Board granted Patent Owner’s request for adverse judgment and cancelled all challenged claims: 4, 6-9, 13-17, 20, 35-39, 42, 47-50, 53-57, and 60.
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). No motion to amend the claims is pending, and, in fact, Patent Owner has requested that each claim for which this inter partes review was instituted be cancelled. Paper 14 at 2. 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
NonePatents in suitUS 5,592,555
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.