- Samsung Bioepis Co., Ltd. / Celltrion, Inc. et al. v. Regeneron Pharmaceuticals, Inc.Adverse judgmentPTAB · Jul 23, 2024 · IPR2024-00298 · APJ Ryan H Flax · IPR · Adverse judgment
The Board entered adverse judgment against Patent Owner on claims 1–30 after it disclaimed every challenged claim, terminating the proceeding.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“Under 37 C.F.R. § 42.72, “[t]he Board may terminate a trial without rendering a final written decision, where appropriate . . . .” Further, 37 C.F.R. § 42.73(b)(1) and (2) together state that, “[a] party may request judgment against itself at any time during a proceeding. Actions construed to be a request for adverse judgment include . . . [d]isclaimer of the involved application or patent [and] [c]ancellation or disclaimer of a claim such that the party has no remaining claim in the trial.” Thus, in disclaiming every claim in the ’572 patent, Patent Owner has constructively requested adverse judgement. Ex. 3005.” slip op. at 2
NonePatents in suitUS 11,253,572 - Samsung Bioepis Co., Ltd. / Celltrion, Inc. et al. v. Regeneron Pharmaceuticals, Inc.Adverse judgmentPTAB · Jul 23, 2024 · IPR2024-00260 · APJ Ryan H Flax · IPR · Adverse judgment
Adverse judgment was entered against Patent Owner as to claims 1–30 after it disclaimed all challenged claims, and the proceeding was terminated.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“Under 37 C.F.R. § 42.72, “[t]he Board may terminate a trial without rendering a final written decision, where appropriate . . . .” Further, 37 C.F.R. § 42.73(b)(1) and (2) together state that, “[a] party may request judgment against itself at any time during a proceeding. Actions construed to be a request for adverse judgment include . . . [d]isclaimer of the involved application or patent [and] [c]ancellation or disclaimer of a claim such that the party has no remaining claim in the trial.” Thus, in disclaiming every claim in the ’572 patent, Patent Owner has constructively requested adverse judgement. Ex. 3005. We grant Patent Owner’s request. Several exhibits filed in this proceeding were done so under seal as” slip op. at 2
NonePatents in suitUS 11,253,572 - Samsung Bioepis Co., Ltd. / Celltrion, Inc. et al. v. Regeneron Pharmaceuticals, Inc.Adverse judgmentPTAB · Jul 23, 2024 · IPR2023-00884 · APJ Ryan H Flax · IPR · Adverse judgment
The Board entered adverse judgment against Patent Owner on claims 1–30 after their disclaimer and terminated the proceeding.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“Under 37 C.F.R. § 42.72, “[t]he Board may terminate a trial without rendering a final written decision, where appropriate . . . .” Further, 37 C.F.R. § 42.73(b)(1) and (2) together state that, “[a] party may request judgment against itself at any time during a proceeding. Actions construed to be a request for adverse judgment include . . . [d]isclaimer of the involved application or patent [and] [c]ancellation or disclaimer of a claim such that the party has no remaining claim in the trial.” Thus, in disclaiming every claim in the ’572 patent, Patent Owner has constructively requested adverse judgement. Ex. 3005. We grant Patent Owner’s request. Several exhibits filed in this proceeding were done so under seal as” slip op. at 2
NonePatents in suitUS 11,253,572 - PTAB · Feb 21, 2024 · IPR2023-01312 · APJ Jamie T Wisz · IPR · Adverse judgment
The Board entered adverse judgment against Patent Owner on claims 1–18 after Patent Owner disclaimed all claims, and terminated the proceeding.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“requisite fees. See Ex. 2104; see also 37 C.F.R. § 1.321 (setting forth requirements for statutory disclaimer). Under 37 C.F.R. § 42.73(b), “[a]ctions construed to be a request for adverse judgment include . . . (2) [c]ancellation or disclaimer of a claim such that the party has no remaining claim in the trial.” Because Patent Owner has disclaimed all claims of the ’992 patent, we construe this disclaimer as a request for adverse judgment, and we enter adverse judgment against the Patent Owner with respect to claims 1–18 of the ’992 patent. Accordingly, it is ORDERED that judgment is entered under 37 C.F.R. § 42.73(b) against Patent Owner with respect to claims 1–18 of U.S. Patent No. 10,464,992 B2; and” slip op. at 2
NonePatents in suitUS 10,464,992 - PTAB · Feb 21, 2024 · IPR2023-00462 · APJ Jamie T Wisz · IPR · Adverse judgment
After Patent Owner disclaimed claims 1–18, the Board entered adverse judgment against Patent Owner on those claims and terminated the proceeding.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“Patent Owner has disclaimed all claims of the ’992 patent and paid the requisite fees. See Ex. 2104; see also 37 C.F.R. § 1.321 (setting forth requirements for statutory disclaimer). Under 37 C.F.R. § 42.73(b), “[a]ctions construed to be a request for adverse judgment include . . . (2) [c]ancellation or disclaimer of a claim such that the party has no remaining claim in the trial.” Because Patent Owner has disclaimed all claims of the ’992 patent, we construe this disclaimer as a request for adverse judgment, and we enter adverse judgment against the Patent Owner with respect to claims 1–18 of the ’992 patent. Accordingly, it is ORDERED that judgment is entered under 37 C.F.R. § 42.73(b) against Patent Owner with respect to claims 1–18 of U.S. Patent No. 10,464,992 B2; and” slip op. at 2
NonePatents in suitUS 10,464,992 - Early Warning Services, LLC v. Fintech Innovation Associates LLCAdverse judgmentPTAB · Feb 17, 2023 · PGR2022-00046 · APJ Robert L Kinder · PGR · Adverse judgment
The Board entered adverse judgment against Patent Owner after it disclaimed the sole challenged claim, which the Board cancelled.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“proceeding. 37 C.F.R. § 42.73(b). Actions construed as a request for entry of adverse judgment include “[c]ancellation or disclaimer of a claim such that the party has no remaining claim in the trial.” Id.” slip op. at 3
None - Sabinsa Corporation v. Franco CavaleriAdverse judgmentPTAB · Jan 13, 2023 · PGR2022-00015 · APJ Susan L C Mitchell · PGR · Adverse judgment
The Board granted Patent Owner’s request for adverse judgment, canceled claims 1–7, and terminated the proceeding after Patent Owner requested cancellation of all claims.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“time during a proceeding. 37 C.F.R. § 42.73(b). Actions construed to be a request for adverse judgment include cancellation of patent claims such that a party has no remaining claim in the trial. 37 C.F.R. § 42.73(b)(2). Patent Owner’s request to cancel claims 1–7 of the ’970 patent leaves no claim remaining in the trial. Accordingly, entry of adverse judgment against Patent Owner pursuant to 37 C.F.R. § 42.73(b) is appropriate. III. ORDER In consideration of the foregoing, it is hereby: ORDERED that Patent Owner’s Request for Entry of Adverse Judgment pursuant to 37 C.F.R. § 42.73(b) is granted;” slip op. at 2
NonePatents in suitUS 10,945,970 - Tarsco Bolted Tank Inc. v. Tank Connection, LLCAdverse judgmentPTAB · Aug 25, 2017 · IPR2016-01634 · APJ Meredith C Petravick · IPR · Adverse judgment
The Board entered adverse judgment against Patent Owner on claims 1–11 after their cancellation and Patent Owner’s abandonment of the contest.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“Actions construed to be 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)(2). Ex Parte Reexamination Certificate No. 9,187,921 C1, canceling claims 1–11 of the ’921 patent, issued on July 24, 2017. Ex. 3001; see Paper 14 (memorializing a conference call during which Patent Owner indicated that it was allowing the claims to be canceled in the reexamination intentionally). Claims 1–11 are all of the claims of the ’921 patent and all claims at issue in this inter partes review. Cancellation of claims 1–11 is construed as a request for adverse judgment. Additionally, “[a]ctions construed to be a request for adverse judgment include: . . . [a]bandonment of the contest.” 37 C.F.R. § 42.73(b)(4). Patent Owner did not file a Patent Owner’s Response or a Motion to Amend in this inter partes review by the May 17, 2017 deadline, set in the Scheduling Order (Paper 13), and did not file a paper in response to the Order to Show Cause by the August 22, 2017 deadline. Patent Owner’s lack of response is consistent with abandonment of the contest. Abandonment of the contest is construed as a request for adverse judgement. slip op. at 2
NonePatents in suitUS 9,187,921 - Denso Corporation v. Netlatch, LLCAdverse judgmentPTAB · Mar 8, 2016 · IPR2015-00473 · APJ Ken B Barrett · IPR · Adverse judgment
The Board granted Continental’s request for adverse judgment as patent owner for claims 14, 17, 27, and 31.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“A party may request judgment against itself at any time during a proceeding. 37 C.F.R. § 42.73(b). Pursuant to 37 C.F.R. § 42.73(b)(3), “[c]oncession of unpatentability” may be construed as a request for adverse judgment. We understand Continental to expressly request entry of adverse judgment against itself as the current patent owner. IPR2015-00481, Continental’s Ownership Statement 5. Additionally, we treat Continental’s concession that certain challenged claims are unpatentable (id. at 5; see IPR2015-00481, Paper 4 (Petition) 3–4 (challenging claims 14, 17, 31, and 33 of the ’431 patent)) as a request for adverse judgment at least as to those claims. 37 C.F.R. § 42.73(b)(3). Under these circumstances, entry of judgment adverse to Patent Owner Continental is appropriate.” slip op. at 7
- PTAB / AIA Trials › Real party in interest / privityDecided for patent owner
“assignment, and found that neither weighed in favor of Mr. Wingard. Id. at 9–10. The Court ultimately found, “at the time of the [bankruptcy] filing, that the patent was owned by Mr. Wingard personally, and, therefore, became part of the [Bankruptcy] Estate,” and the Court granted the Trustee’s motion to sell the patent. Id. at 10, 11; see also Ex. 1020 (Order granting the motion). The time to appeal the order has expired and no appeal was sought. Ex. 1017, 2 (citing Fed. R. Bankr. P. 8002). In an assignment dated December 17, 2015, the Bankruptcy Trustee assigned to Continental the entire right, title, and interest in the ’431 patent. Ex. 1017. An assignment from the Trustee to Continental Automotive GmbH is recorded in the USPTO at Reel/Frame 037329/0544. Ex. 3001. II. ANALYSIS In light of the Bankruptcy Court’s Order and the authorized sale of the ’431 patent, we recognize Continental as the current owner of the ’431 patent for purposes of this inter partes review proceeding. Continental asserts in the related 481 case: “because Continental is now the patent owner and has represented that the 431 patent claims are invalid, the claims should be found unpatentable either by way of a final determination or in response to a request for adverse judgment.” IPR2015-00481, Continental’s Ownership Statement 5.6 Continental also indicates that the same request” slip op. at 6
NonePatents in suitUS 5,530,431 - PTAB · Mar 8, 2016 · IPR2015-00481 · APJ Ken B Barrett · IPR · Adverse judgment
The Board granted Continental’s request for adverse judgment on claims 14, 17, 31, and 33 after Continental, as patent owner, conceded those claims were unpatentable.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“A party may request judgment against itself at any time during a proceeding. 37 C.F.R. § 42.73(b). Pursuant to 37 C.F.R. § 42.73(b)(3), “[c]oncession of unpatentability” may be construed as a request for adverse judgment. 5 Continental also asserts that Netlatch should be dismissed as a party and that all papers filed by Netlatch expunged. Continental’s Ownership Statement 5. Continental does not persuade us that those steps are necessary. See 37 C.F.R. § 41.14 (“The record of a proceeding, including documents and things, shall be made available to the public, except as otherwise ordered.”); Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,760 (Aug. 14, 2012) (referring to “the public’s interest in maintaining a complete and understandable file history”). We understand Continental to expressly request entry of adverse judgment against itself as the current patent owner. Continental’s Ownership Statement 5. Additionally, we treat Continental’s concession that the challenged claims are unpatentable (id. at 5; see Pet. 3–4) as a request for adverse judgment. 37 C.F.R. § 42.73(b)(3). Under these circumstances, entry of judgment adverse to Patent Owner Continental is appropriate.” slip op. at 6
NonePatents in suitUS 5,530,431
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.