- PTAB · Jan 28, 2025 · IPR2024-00312 · APJ Tina E Hulse · IPR · Adverse judgment
The Board granted Patent Owner’s request for adverse judgment after abandonment, entering judgment against Patent Owner on claims 1–28.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“Under 37 C.F.R. § 42.73(b), a party may request adverse judgment against itself at any time during a proceeding. “Abandonment of the contest” is considered to be a request for adverse judgment. 37 C.F.R. § 42.73(b)(4). Here, we instituted an inter partes review of claims 1–28 of the ’432 Patent, and Patent Owner has abandoned the contest in this proceeding. Accordingly, we consider Patent Owner’s abandonment of the contest as a request for adverse judgment, and we grant that request.” slip op. at 2
NonePatents in suitUS 9,486,432 - PTAB · Jul 30, 2024 · IPR2024-00201 · APJ John G New · IPR · Adverse judgment
After Patent Owner disclaimed all challenged claims, the Board entered adverse judgment against Patent Owner under 37 C.F.R. § 42.73(b).
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“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). According to our reviewing court, 37 C.F.R. § 42.73(b) gives the Board authority to construe a patent owner’s actions in disclaiming all challenged claims in an instituted trial as a request for an adverse judgment. Arthrex, Inc. v. Smith & Nephew, Inc., 880 F.3d 1345, 1349 (Fed. Cir. 2018). In the present inter partes review, Patent Owner has disclaimed all challenged claims of the ’601 patent, such that there are none left to be contested by the Petition. We consequently view Patent Owner’s filing of the Disclaimer, removing the last of the challenged claims from this inter partes review, and its request for termination of the proceeding, as a constructive request for adverse judgment against itself under § 42.73(b). Arthrex, 880 F.3d at 1349. Because there are no challenged claims left for the Petition to contest in this proceeding, adverse judgment against Patent Owner is granted.” slip op. at 2
NonePatents in suitUS 10,888,601 - PTAB · Jul 30, 2024 · IPR2023-00739 · APJ John G New · IPR · Adverse judgment
The Board entered adverse judgment against Patent Owner after it disclaimed all challenged claims of the ’601 patent.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“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). According to our reviewing court, 37 C.F.R. § 42.73(b) gives the Board authority to construe a patent owner’s actions in disclaiming all challenged claims in an instituted trial as a request for an adverse judgment. Arthrex, Inc. v. Smith & Nephew, Inc., 880 F.3d 1345, 1349 (Fed. Cir. 2018). In the present inter partes review, Patent Owner has disclaimed all challenged claims of the ’601 patent, such that there are none left to be contested by the Petition. We consequently view Patent Owner’s filing of the Disclaimer, removing the last of the challenged claims from this inter partes review, and its request for termination of the proceeding, as a constructive request for adverse judgment against itself under § 42.73(b). Arthrex, 880 F.3d at 1349. Because there are no challenged claims left for the Petition to contest in this proceeding, adverse judgment against Patent Owner is granted.” slip op. at 2
NonePatents in suitUS 10,888,601 - 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
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.