- Meta Platforms, Inc. v. Mullen Industries LLCAdverse judgmentPTAB · Dec 19, 2025 · IPR2025-00745 · APJ Ken B Barrett · IPR · Adverse judgment
The Board denied Mullen Industries LLC’s motions to dismiss and entered adverse judgment on challenged claims 1, 2, 11, and 13 after their post-institution disclaimer.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“provide that “[a] party may request judgment against itself at any time during a proceeding,” and “[a]ctions 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). “The application of the [adverse judgment] rule on its face does not turn on the patentee’s characterization of its own request.” Arthrex, Inc. v. Smith & Nephew, Inc., 880 F.3d 1345, 1349 (Fed. Cir. 2018).” slip op. at 6
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Denied
“Constitution that there exist a case or controversy to be adjudicated by a district court. See Sanofi-Aventis, 933 F.3d at 1372–73. The Board is not a district court or any other Article III court, and Patent Owner has not shown persuasively that Sanofi-Aventis supports its argument that dismissal, as opposed to adverse judgement, is appropriate.” slip op. at 3
NonePatents in suitUS 9,662,582 - Meta Platforms, Inc. v. Mullen Industries LLCAdverse judgmentPTAB · Dec 19, 2025 · IPR2025-00746 · APJ Ken B Barrett · IPR · Adverse judgment
The Board denied Mullen Industries LLC’s motion to dismiss and entered adverse judgment after institution for disclaimed claims 1–3 of U.S. Patent 10,974,151.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“We determine that Petitioner has the better position. Our rules provide that “[a] party may request judgment against itself at any time during a proceeding,” and “[a]ctions 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). “The application of the [adverse judgment] rule on its face does not turn on the patentee’s characterization of its own request.” Arthrex, Inc. v. Smith & Nephew, Inc., 880 F.3d 1345, 1349 (Fed. Cir. 2018). In this case, Patent Owner, after the institution decisions, disclaimed the challenged claims such that there are no remaining claims in the trials. Patent Owner presents no persuasive reasons why we should not apply Rule 42.73 or why termination or dismissal is more appropriate. Under the IPR2025-00745 (Patent 9,662,582 B2) IPR2025-00746 (Patent 10,974,151 B2) circumstances of these cases, we construe the filing of disclaimers as requests for adverse judgment.” slip op. at 6
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Denied
“Constitution that there exist a case or controversy to be adjudicated by a district court. See Sanofi-Aventis, 933 F.3d at 1372–73. The Board is not a district court or any other Article III court, and Patent Owner has not shown persuasively that Sanofi-Aventis supports its argument that dismissal, as opposed to adverse judgement, is appropriate.” slip op. at 3
NonePatents in suitUS 10,974,151 - Bote, LLC v. Steamboat Paddlesports, LLCAdverse judgmentPTAB · Mar 25, 2025 · IPR2024-00892 · APJ Cynthia L Murphy · IPR · Adverse judgment
The Board entered adverse judgment against Patent Owner on claims 1–20 after finding abandonment, resulting in cancellation of all challenged claims.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“As noted in the Scheduling Order, “[i]f Patent Owner elects not to file a response to the Petition, Patent Owner must arrange a conference call with the parties and the Board.” [Paper 15, 9.] Thus, Patent Owner has three options: 1) file a response by February 18, 2025, 2) arrange a conference call in accordance with the Scheduling Order, or 3) stipulate a revised due date with Petitioner and file a response by the stipulated due date. Patent Owner must appoint counsel to proceed with any of these options, which Patent Owner should do without delay. Patent Owner’s failure to proceed with one of these options could be viewed as an abandonment of this proceeding. And such abandonment would be construed as Patent Owner’s request for adverse judgment against itself (see 37 C.F.R. § 42.73(b)(4)), resulting in cancellation of all of the claims challenged in the Petition.” slip op. at 2
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Not reached
“Accordingly, it is ORDERED that adverse judgment shall be entered against Patent Owner as to claims 1–20 of the ’466 patent under 37 C.F.R. § 42.73(b).4 FURTHER ORDERED that this paper constitutes a final written decision pursuant to 35 U.S.C. § 318(a) holding that claims 1–20 of the ’466 patent are unpatentable based on the adverse judgment; and “not made any attempt whatsoever to contact Petitioner regarding this IPR.” Ex. 1027 ¶ 7. 3 Patent Owner is reminded of the applicable estoppel provisions in 37 C.F.R. § 42.73(d)(3). 4 Petitioner filed a motion asking for a finding that Patent Owner had abandoned the proceedings and constructively requested adverse judgment against itself. See Paper 19; Ex. 3002. Petitioner’s motion is dismissed as moot in view of our entry of adverse judgment for the reasons expressed herein. The same applies to Petitioner’s request to submit supplemental evidence. See Ex. 3003.” slip op. at 3
NonePatents in suitUS 9,862,466 - Encube Ethicals PTV. Ltd. v. Dermavant Sciences GmbHAdverse judgmentPTAB · Mar 7, 2025 · IPR2024-00834 · APJ Tawen Chang · IPR · Adverse judgment
The Board entered adverse judgment against Patent Owner on all challenged claims, 1–4, 6–10, 16, 18, 21, and 22, following their disclaimer.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“Terminate Proceeding and Parties’ Joint Motion for Entry of Adverse Judgment (collectively “Motion”). The parties jointly request that the Board enter adverse judgment in light of the disclaimer filed by Patent Owner disclaiming all challenged claims. Mot. 1 (citing 37 C.F.R. § 42.73(b)(2)). The Motion attaches as an exhibit a disclaimer under 37 C.F.R. § 1.321(a), filed January 28, 2025, of claims 1–4, 6–10, 16, 18, 21, and 22 of the ’088 patent, which constitute all of the claims challenged in the inter partes review. Ex. 2001; Paper 1, 3.” slip op. at 2
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Denied
“Accordingly, we grant the Parties’ Joint Motion for Entry of Adverse Judgment. This Adverse Judgment is sufficient to dispose of this proceeding and Patent Owner’s Motion to Terminate is denied as moot.1” slip op. at 3
NonePatents in suitUS 11,590,088 - BMW Of North America, LLC / Mercedes-Benz USA, LLC v. Michigan Motor Technologies, LLCAdverse judgmentPTAB · Jun 12, 2024 · IPR2023-01032 · APJ Scott B Howard · IPR · Adverse judgment
The Board denied Patent Owner’s motion to terminate and entered adverse judgment against Patent Owner on claims 1–7 because it disclaimed all claims in the trial.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“unobjected to. See Mot. 1 (Patent Owner not objecting to entry of adverse judgment); Opp. 2 (Petitioner not opposing entry of adverse judgment). The Board construes an action cancelling or disclaiming claims such that no challenged claims remain in the trial as a request for adverse judgment. 37 C.F.R. § 42.73(b)(2) (“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.”); see also McAfee, Inc. v. CAP Co., Ltd., IPR2016-00211, Paper 19 (PTAB Apr. 5, 2017) (entering adverse judgment based on motion to amend seeking cancellation of claims remaining in the trial). In this case, the Board instituted trial on claims 1–7 of the ’565 patent, none of which remains in the trial following Patent Owner’s statutory disclaimer. Ex. 2002, 3 (disclaiming claims 1–7). Accordingly, we construe Patent Owner’s disclaimer as a request for adverse judgment, and we grant that request.” slip op. at 3
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Denied
“We agree with Petitioner. A motion to terminate is governed by 37 C.F.R. § 42.72 (2023). Under 37 C.F.R. § 42.72, “[t]he Board may terminate a trial without rendering a final written decision, where appropriate, including where the trial is consolidated with another proceeding or pursuant to a joint request under 35 U.S.C. [§] 317(a) or 327(a).” In this case, there is no “consolidat[ion] . . . or . . . a joint request under 35 U.S.C. [§] 317(a) or 327(a),” so the application of § 42.72 here is unclear.” slip op. at 3
NonePatents in suitUS 6,581,565 - BMW Of North America, LLC v. Michigan Motor Technologies, LLCAdverse judgmentPTAB · Jun 11, 2024 · IPR2023-01031 · APJ Scott B Howard · IPR · Adverse judgment
The Board denied Patent Owner’s motion to terminate and entered adverse judgment against it on claims 1, 2, 4–7, and 9–13 because it disclaimed all claims in the trial.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“However, application of section 42.73 is straightforward and unobjected to. See Paper 23, 3 (Patent Owner not objecting to entry of adverse judgment). The Board construes an action cancelling or disclaiming claims such that no challenged claims remain in the trial as a request for adverse judgment. 37 C.F.R. § 42.73(b)(2) (“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.”); see also McAfee, Inc. v. CAP Co., Ltd., IPR2016-00211, Paper 19 (PTAB Apr. 5, 2017) (entering adverse judgment based on motion to amend seeking cancellation of claims remaining in the trial). In this case, the Board instituted trial on claims 1, 2, 4–7, and 9–13 of the ’482 patent, none of which remains in the trial following Patent Owner’s statutory disclaimer. Ex. 2005, 5 (disclaiming claims 1, 2, 4–7, and 9–13). Accordingly, we construe Patent Owner’s disclaimer as a request for adverse judgment, and we grant that request.” slip op. at 4
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Denied
“Patent Owner’s request as a motion to terminate pursuant to 37 C.F.R. § 42.72 (2023). Under 37 C.F.R. § 42.72, “[t]he Board may terminate a trial without rendering a final written decision, where appropriate, including where the trial is consolidated with another proceeding or pursuant to a joint 2 Patent Owner did not state that it met-and-conferred with Petitioner. Nor did Patent Owner request authorization to file a motion to terminate the proceedings. request under 35 U.S.C. 317(a) or 327(a).” In this case, there is no “consolidat[ion] . . . or a joint request under 35 U.S.C. 317(a) or 327(a),” so the application of § 42.72 here is unclear.” slip op. at 3
NonePatents in suitUS 8,909,482 - Dell Inc. / Dell Technologies Inc. v. Softex LLCAdverse judgmentPTAB · Mar 19, 2024 · IPR2024-00564 · APJ Thu A Dang · IPR · Adverse judgment
The Board granted Patent Owner’s request for adverse judgment after it disclaimed claims 1–25 before institution, leaving no claim for consideration.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“Our Rules provide that “[a]ctions construed to be a request for adverse judgment include: . . . [c]ancellation or disclaimer of a claim such that the Owner’s disclaimer of claims 1–25 leaves no claim remaining in the trial. Therefore, pursuant to our Rules, we construe this disclaimer as a request for adverse judgment, which we grant.” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingNot reached
“Petition requesting an inter partes review of claims 1–25 (“the challenged claims”) of U.S. Patent No. 8,506,649 B2 (Ex. 1001, “the ’649 patent). Paper 2 (“Petition”). Along with the Petition, Petitioner filed a Motion for Joinder to inter partes review IPR2023-01185. Paper 3 (“Motion”).” slip op. at 2
NonePatents in suitUS 8,506,649 - Netflix, Inc.Adverse judgmentPTAB · Mar 18, 2024 · IPR2022-01568 · APJ Barbara A Parvis · IPR · Adverse judgment
The Board denied Netflix’s requests for adverse judgment and to expunge Patent Owner’s papers, then dismissed and terminated the proceeding without a final written decision.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentDenied
“(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: (1) Disclaimer of the involved application or patent; (2) Cancellation or disclaimer of a claim such that the party has no remaining claim in the trial; (3) Concession of unpatentability or derivation of the contested subject matter; and (4) Abandonment of the contest. 37 C.F.R. § 42.73(b). Based on the record before us, we do not find that any action has been taken by Mr. Valjakka or Suomen Biisi Oy during this proceeding that is properly construed as a request for adverse judgment. Mr. Valjakka has not taken any of the actions set forth in 37 C.F.R. § 42.73(b)(1)–(4). Mr. Valjakka has not filed or requested a disclaimer of the patent or cancellation of any claim. Mr. Valjakka also has not conceded unpatentability or abandoned the contest. To the contrary, Mr. Valjakka filed a Patent Owner Response (Paper 9), a Sur-reply (Paper 15), and a Request for Oral Argument (Paper 16). Additionally, following the District Court’s Order, Mr. Valjakka seeks to continue to act as the patent owner in this proceeding. Resp. Br. 4.” slip op. at 5
- PTAB / AIA Trials › Real party in interest / privityOther
“The circumstances of the instant proceeding starkly contrast those in FedEx, in which the district court granted a motion to dismiss without determining patent ownership. FedEx, IPR2017-01786, Paper 28, 16. In the instant proceeding, Netflix and Mr. Valjakka agree that we should not make an independent determination as to whether Mr. Valjakka has established that he has standing to take action as patent owner in these proceedings because the proper venue is the District Court, which already decided against Mr. Valjakka and granted Netflix’s Motion for Summary Judgment. Ex. 3001, 14. Based on the record before us, we decline to make an independent determination as to whether Mr. Valjakka has standing to act as a patent owner in this proceeding. Accordingly, we deny Netflix’s request to terminate this proceeding and expunge Mr. Valjakka’s papers and exhibits on the basis of our making an independent determination that Mr. Valjakka does not have standing to act as a patent owner.” slip op. at 9
NonePatents in suitUS 8,495,167 - PTAB · Jan 31, 2018 · IPR2017-01777 · APJ Patrick R Scanlon · IPR · Adverse judgment
The Board denied institution because Patent Owner recorded a statutory disclaimer of all challenged claims.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentDenied
“Under 37 C.F.R. § 42.107(e), “patent owner may file a statutory disclaimer under 35 U.S.C. 253(a) in compliance with § 1.321(a) of this chapter, disclaiming one or more claims in the patent” and “[n]o inter partes review will be instituted based on disclaimed claims.” A disclaimer under 35 U.S.C. § 253(a) is “considered as part of the original patent” once it is “recorded” in the Office. 35 U.S.C. § 253(a).” slip op. at 3
Discretionary denialPatents in suitUS 8,167,043 - Opower Inc. v. Cleantech Business Solutions, LLCAdverse judgmentPTAB · Nov 25, 2015 · CBM2014-00155 · APJ Karl D Easthom · CBM · Adverse judgment
The Board entered adverse judgment against Patent Owner on claims 1–16 after Patent Owner disclaimed all claims in the trial.
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.” 37 C.F.R. § 42.73(b)(2). Here, Patent Owner has disclaimed, under 37 C.F.R. § 1.321, claims 1–16, all claims involved in this trial. Paper 28. The statutory disclaimer constitutes a request for entry of adverse judgment.1 III. CONCLUSION Entry of judgment against Patent Owner with respect to claims 1–16 of the ’245 patent is appropriate.” slip op. at 2
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Denied
“1 During a telephone conference on November 17, 2015, which included counsel for both parties and the panel, counsel for Petitioner stated he did not object to the request for adverse judgment, but requested that the panel issue with this judgment findings of fact and legal determinations arising from papers of record. Petitioner expressed a concern over a potential for duplicated efforts in ongoing reissue proceedings involving the ’245 patent. We exercise our discretion and decline the request to supplement the record. See 37 C.F.R. § 42.73(d) (3) (i) (precluding Patent Owner from obtaining claims that are not “patentably distinct from a finally refused or canceled claim”).” slip op. at 3
NonePatents in suitUS 8,489,245
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.