- 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 - Mercedes-Benz USA, LLC / Mercedes-Benz U.S. International, Inc. v. Velocity Patent LLCAdverse judgmentPTAB · Jan 6, 2015 · IPR2014-01247 · APJ Peter P Chen · IPR · Adverse judgment
The Board granted Patent Owner’s request to cancel challenged claims 31 and 32 and entered adverse judgment against Patent Owner before institution.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“of claims 31 and 32 (Paper 19). Under 37 C.F.R. § 42.73(b), cancellation of all challenged claims leaving no remaining claims for trial is construed as a request for entry of adverse judgment. ORDER Accordingly, it is ORDERED that Patent Owner’s request to cancel claims 31 and 32 of U.S. Patent No. 5,954,781, is granted; and FURTHER ORDERED that adverse judgment is entered herein against Patent Owner.” slip op. at 2
NonePatents in suitUS 5,954,781 - 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 - ZTE (USA), Inc. v. Pragmatus Mobile LLCAdverse judgmentPTAB · Aug 11, 2014 · IPR2014-00670 · APJ Glenn J Perry · IPR · Adverse judgment
The Board granted the parties’ joint motion and terminated the proceeding by settlement before deciding the petition.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“The parties have requested that these trial proceedings be terminated pursuant to a settlement. On August 5, 2014, the Board authorized (Paper 8) the parties to file a Joint Motion to Terminate this proceeding along with a true copy of any and all settlement agreements between them related to the patent at issue. On August 8, 2014, the parties filed a Joint Motion to Terminate (Paper 9) in accordance with 35 U.S.C. § 327(a) and 37 C.F.R. § 42.72. The parties also filed a Joint Motion to Treat the Parties’ Settlement Agreement as Business Confidential pursuant to 35 U.S.C. § 317(b) and Rule 42.74 (Paper 10). The settlement agreement (Paper 11), marked “Confidential,” purports to settle matters between the parties with respect to the patent at issue in this inter partes review. This inter partes review is in its preliminary stage. A decision on the Corrected Petition (Paper 4) has not yet been rendered. The parties have not identified any other USPTO proceedings related to the patent at issue. Under these circumstances, the Board determines that it is appropriate to enter judgment1 and terminate the trial without rendering a final written decision under 37 C.F.R. § 42.72.” slip op. at 2
NonePatents in suitUS 8,466,795 - 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 - Hitachi Cable America Inc. v. Belden Inc.Adverse judgmentPTAB · 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
NonePatents in suitUS 5,563,377 - 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.