- Nichia Corporation v. Document Security Systems, Inc.Adverse judgmentPTAB · Nov 18, 2022 · IPR2018-01165 · APJ Barbara A Benoit · IPR · Adverse judgment
The Board granted adverse judgment against Patent Owner as to claims 16–19 after their statutory disclaimer and terminated the proceeding.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“Moreover, under 37 § C.F.R. 42.73(b), a “party may request judgment against itself at any time during a proceeding. 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 only claims before us on remand have been disclaimed. Accordingly, we construe Patent Owner’s disclaimer to be a request for adverse judgment as to those claims which remain before us, which we now grant.” slip op. at 3
- RemandOther
“Written Decision to the United States Court of Appeals for the Federal Circuit. Papers 31, 32. The court issued its decision affirming our findings as to all claims except claims 15–19. Nichia Corp. v. Document Sec. Sys., Inc., Nos. 2020-2261, 2020-2287, 2022 WL 1218036, at *1 (Fed. Cir. Apr. 26, 2022). Specifically, the court reversed our determination that Petitioner had not shown independent claim 15 to be unpatentable and remanded for further proceedings regarding dependent claims 16–19. Id. On June 14, 2022, the court issued the formal mandate. Paper 33. On June 23, 2022, Patent Owner statutorily disclaimed claims 16–19 of the ’087 patent. Thus, claims 16–19 are no longer part of this proceeding and no issues remain for us to consider on remand. See Sanofi-Aventis U.S., LLC v. Dr. Reddy’s Labs., Inc., 933 F.3d 1367, 1373 (Fed. Cir. 2019) (noting that disclaiming claims effectively eliminates those claims from the patent as though the disclaimed claims had never existed (internal quotations and citations omitted)); see also Asetek Danmark A/S v. CoolIT Sys., Inc., IPR2020-00747, Paper 42 at 6 (PTAB Sept. 30, 2021) (determining that a proceeding); cf. 37 C.F.R. § 42.107(e) (“No inter partes review will be instituted based on disclaimed claims.”).” slip op. at 2
NonePatents in suitUS 7,524,087 - Petitioner v. Ubiquitous Connectivity, LPAdverse judgmentPTAB · Nov 9, 2022 · IPR2021-01355 · APJ Georgianna W Braden · IPR · Adverse judgment
The Board entered adverse judgment against the Patent Owner on instituted claims 1–14 and 25 after construing its disclaimer as a request for adverse judgment.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“Here, Patent Owner has disclaimed all claims in the instituted trial proceeding such that there are no remaining claims at issue in the trial. Thus, we construe Patent Owner’s statutory disclaimer of claims 1–14 and 25 of the ’999 patent as a request for adverse judgment, and we grant the request for adverse judgment as to the instituted claims. III. ORDER In consideration of the foregoing, it is hereby ORDERED that adverse judgment is entered against Patent Owner as to claims 1–14 and 25 of the ’999 patent; and FURTHER ORDERED that this proceeding is hereby terminated.” slip op. at 4
- PTAB / AIA Trials › §315(e) estoppelEstoppel appliesOther
“description. Construing Patent Owner’s statutory disclaimer of all claims remaining in the trial as a request for adverse judgment and granting the request precludes Patent Owner under the estoppel provision of § 42.73(d)(3)(i) from obtaining in continuing applications or other subsequent proceedings before the Office claims patentably indistinct from the disclaimed claims. Cf. Ex Parte Aoki, Appeal No. 2012-010117, 2015 WL 3827164 (PTAB June 15, 2015) (affirming Examiner’s final rejection of claims patentably indistinct from claims on which adverse judgment had been entered against applicant in a prior interference proceeding);” slip op. at 4
NonePatents in suitUS 10,394,999 - Securus Technologies, Inc. v. Global Tel*link CorporationAdverse judgmentPTAB · Jan 10, 2017 · IPR2016-01446 · APJ Georgianna W Braden · IPR · Adverse judgment
The Board entered adverse judgment against Patent Owner on claims 1–5 because those claims were statutorily disclaimed.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentOther
“Under 37 C.F.R. § 42.73(b), a party may request an adverse judgment at any time during a proceeding. Disclaimer of claims, such that a party has no remaining claim in the proceeding, is deemed a request for entry of adverse judgment. 37 C.F.R. § 42.73 (b)(1) & (2). Accordingly, we construe Patent Owner’s statutory disclaimer of all of the challenged claims in the ’798 patent as a request for adverse judgment.” slip op. at 2
NonePatents in suitUS 7,333,798 - PTAB · Dec 7, 2015 · IPR2015-00624 · APJ Charles J Boudreau · IPR · Adverse judgment
The Board entered adverse judgment against the patent owner and canceled claims 27, 28, 38, and 39.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“DISCUSSION A party may request entry of adverse judgment against itself at any time during a proceeding. See 37 C.F.R. § 42.73(b). Here, in view of Patent Owner’s explicit request for adverse judgment, entry of judgment adverse to Patent Owner and cancellation of claims 27, 28, 38, and 39 of the ’872 patent are appropriate. Further, because “[a] judgment . . . disposes of all issues that were, or by motion reasonably could have been, raised and decided,” 37 C.F. R. § 42.73(a), we dismiss Patent Owner’s co-pending Request to Terminate Proceeding as moot.” slip op. at 2
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Other
“Patent Owner and cancellation of claims 27, 28, 38, and 39 of the ’872 patent are appropriate. Further, because “[a] judgment . . . disposes of all issues that were, or by motion reasonably could have been, raised and decided,” 37 C.F. R. § 42.73(a), we dismiss Patent Owner’s co-pending Request to Terminate Proceeding as moot. ORDER Accordingly, it is ORDERED that Patent Owner’s Request for Adverse Judgment is” slip op. at 3
NonePatents in suitUS 7,456,872 - Dr. Michael Farmwald / RPX Corporation v. Parkervision, Inc.Adverse judgmentPTAB · Oct 29, 2015 · IPR2014-00946 · APJ Bart A Gerstenblith · IPR · Adverse judgment
The Board granted Patent Owner’s motion for adverse judgment and cancelled claims 1, 82, 90, and 91.
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). “Judgment” is defined as “a final written decision by the Board, or a termination of a proceeding.” 37 C.F.R. § 42.2. Although Patent Owner uses the term “termination” in its Motion, it did not submit the Motion under 37 C.F.R. § 42.72 and did not explain why termination is appropriate in this circumstance. See 37 C.F.R. § 42.72 (noting that the Board may terminate a trial without rendering a final written decision “where appropriate,” such as when the trial is consolidated with another proceeding or pursuant to a settlement under 35 U.S.C. § 317(a)). Under the circumstances presented here, we see no reason not to grant Patent Owner’s Motion. Additionally, for the reasons discussed above, this Decision is a Final Written Decision, not a termination of the proceeding.1” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“(collectively, “Petitioner”) filed a Petition for inter partes review of U.S. Patent No. 6,266,518 B1 (“the ’518 patent”). Paper 1. ParkerVision, Inc. (“Patent Owner”) filed a Preliminary Response on September 24, 2014. Paper 7. On December 18, 2014, we instituted this inter partes review of claims 1, 82, 90, and 91 of the ’518 patent. Paper 8.” slip op. at 2
NonePatents in suitUS 6,266,518 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. et al. v. Black Hills Media, LLCAdverse judgmentPTAB · Jun 8, 2015 · IPR2014-00721 · APJ Tina E Hulse · IPR · Adverse judgment
Patent Owner’s motion to cancel claims 1 and 11 was granted and treated as a request for adverse judgment; judgment was entered against Patent Owner on those claims.
RulingsAdverse judgment- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted
“Pursuant to 37 C.F.R. § 42.73(b), a party may request judgment against itself at any time during a proceeding. We construe the cancellation of claims such that the patent owner has no remaining claim in the trial to be 1 Hatlelid et al., US 6,772,195 B1, issued Aug. 3, 2004 (Ex. 1003). 2 Dwek, US 6,248,946 B1, issued June 19, 2001 (Ex. 1004). 3 Traversat et al., US 7,065,579 B2, issued June 20, 2006 (Ex. 1005). 4 Gong et al., Multicast Security and Its Extension to a Mobile Environment, 1 WIRELESS NETWORKS 281–95 (1995) (Ex. 1006). 5 We note that Patent Owner did not request a conference call with the Board before filing its Motion to Amend, as required by 37 C.F.R. § 42.121(a). Under the circumstances of this case, we exercise our discretion and determine that it is appropriate to waive the requirements of this rule. See 37 C.F.R. § 42.5(b). a request for adverse judgment. See 37 C.F.R. § 42.73(b)(2). Here, Patent Owner requests cancellation of all claims of the ’082 patent on which a trial was instituted, such that Patent Owner would have no remaining claim in the trial. Thus, it is appropriate to enter judgment at this time.” slip op. at 3
- Adverse judgmentAdverse judgmentOther
“against itself at any time during a proceeding. We construe the cancellation of claims such that the patent owner has no remaining claim in the trial to be 1 Hatlelid et al., US 6,772,195 B1, issued Aug. 3, 2004 (Ex. 1003). 2 Dwek, US 6,248,946 B1, issued June 19, 2001 (Ex. 1004). 3 Traversat et al., US 7,065,579 B2, issued June 20, 2006 (Ex. 1005). 4 Gong et al., Multicast Security and Its Extension to a Mobile Environment, 1 WIRELESS NETWORKS 281–95 (1995) (Ex. 1006). 5 We note that Patent Owner did not request a conference call with the Board before filing its Motion to Amend, as required by 37 C.F.R. § 42.121(a). Under the circumstances of this case, we exercise our discretion and determine that it is appropriate to waive the requirements of this rule. See 37 C.F.R. § 42.5(b). a request for adverse judgment. See 37 C.F.R. § 42.73(b)(2). Here, Patent Owner requests cancellation of all claims of the ’082 patent on which a trial was instituted, such that Patent Owner would have no remaining claim in the trial. Thus, it is appropriate to enter judgment at this time.” slip op. at 3
NonePatents in suitUS 7,917,082 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. et al. v. Black Hills Media, LLCAdverse judgmentPTAB · Jun 8, 2015 · IPR2014-00718 · APJ Tina E Hulse · IPR · Adverse judgment
Patent Owner canceled claims 9 and 10 by motion; the Board treated it as a request for adverse judgment and entered judgment against Patent Owner.
RulingsAdverse judgment- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted
“II. MOTION TO AMEND In its Motion to Amend, Patent Owner seeks to cancel both claims 9 and 10, which are the only claims subject to this proceeding.7 Paper 20, 1. Petitioner did not file an opposition to Patent Owner’s Motion to Amend. Accordingly, Patent Owner’s Motion to Amend canceling claims 9 and 10 of the ’689 patent is granted.” slip op. at 3
- Adverse judgmentAdverse judgmentOther
“Pursuant to 37 C.F.R. § 42.73(b), a party may request judgment against itself at any time during a proceeding. We construe the cancellation of claims such that the patent owner has no remaining claim in the trial to be a request for adverse judgment. See 37 C.F.R. § 42.73(b)(2). Here, Patent Owner requests cancellation of all claims of the ’689 patent on which a trial was instituted, such that Patent Owner would have no remaining claim in the trial. Thus, it is appropriate to enter judgment at this time.” slip op. at 4
NonePatents in suitUS 7,835,689 - Alternative Legal Solutions, Inc., Dba Compli, Inc. / Hotlinkhr, Inc. et al. v. Employment Law Compliance, Inc.Adverse judgmentPTAB · Feb 2, 2015 · IPR2014-00562 · APJ Lynne E Pettigrew · IPR · Adverse judgment
The Board entered adverse judgment against Patent Owner in both proceedings and cancelled claims 1–20, 74–80, and 89–94.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“Adverse Judgment Pursuant to 37 C.F.R. § 42.73(b)(4) in each of the two proceedings. IPR2014-00562, Paper 24; IPR2015-00544, Paper 7. Under 37 C.F.R. § 42.73(b), a party may request judgment against itself at any time during a proceeding. Actions construed to be a request for adverse judgment include abandonment of the contest. 37 C.F.R. § 42.73(b)(4). Patent Owner acknowledges that, in accordance with its requests, the Board will terminate the proceedings and cancel all challenged claims. IPR2014-00562, Paper 24, 1; IPR2015-00544, Paper 7, 1. Patent Owner further acknowledges that its actions subject it to the estoppel provisions of 37 C.F.R. § 42.73(d). IPR2014-00562, Paper 24, 1; IPR2015-00544, Paper 7, 1. ORDER Accordingly, it is: ORDERED that adverse judgment is entered against Patent Owner” slip op. at 2
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Other
“FURTHER ORDERED that Patent Owner’s Motion to Stay Co- Pending Ex Parte Reexamination Pursuant to 35 U.S.C. § 315(d) and 37 C.F.R. § 42.122 (IPR2014-00562, Paper 17) is dismissed as moot.” slip op. at 3
NonePatents in suitUS 7,330,817 - Alternative Legal Solutions, Inc., Dba Compli, Inc. / Hotlinkhr, Inc. et al. v. Employment Law Compliance, Inc.Adverse judgmentPTAB · Feb 2, 2015 · IPR2015-00544 · APJ Lynne E Pettigrew · IPR · Adverse judgment
The Board entered adverse judgment against the patent owner in both proceedings, canceled claims 1–20, 74–80, and 89–94, and dismissed the stay motion as moot.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“Adverse Judgment Pursuant to 37 C.F.R. § 42.73(b)(4) in each of the two proceedings. IPR2014-00562, Paper 24; IPR2015-00544, Paper 7. Under 37 C.F.R. § 42.73(b), a party may request judgment against itself at any time during a proceeding. Actions construed to be a request for adverse judgment include abandonment of the contest. 37 C.F.R. § 42.73(b)(4). Patent Owner acknowledges that, in accordance with its requests, the Board will terminate the proceedings and cancel all challenged claims. IPR2014-00562, Paper 24, 1; IPR2015-00544, Paper 7, 1. Patent Owner further acknowledges that its actions subject it to the estoppel provisions of 37 C.F.R. § 42.73(d). IPR2014-00562, Paper 24, 1; IPR2015-00544, Paper 7, 1. ORDER Accordingly, it is: ORDERED that adverse judgment is entered against Patent Owner” slip op. at 2
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Other
“FURTHER ORDERED that Patent Owner’s Motion to Stay Co- Pending Ex Parte Reexamination Pursuant to 35 U.S.C. § 315(d) and 37 C.F.R. § 42.122 (IPR2014-00562, Paper 17) is dismissed as moot.” slip op. at 3
NonePatents in suitUS 7,330,817 - Silver Peak Systems, Inc. v. Riverbed Technology, Inc.Adverse judgmentPTAB · Aug 7, 2014 · IPR2014-00149 · APJ Frances L Ippolito · IPR · Adverse judgment
The Board granted Patent Owner’s request to cancel claims 1–14 and entered adverse judgment against Patent Owner on those claims.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentDecided for patent owner
“Pursuant to 37 C.F.R. § 42.73(b), a party may request judgment against itself at any time during a proceeding. Cancellation of one or more claims, such that the patent owner has no remaining claim in the trial, is construed to be a request for adverse judgment. 37 C.F.R. § 42.73(b)(2). Here, Patent Owner requests cancellation of all claims of the ’580 patent on which a trial was instituted, such that Patent Owner would have no remaining claim in the trial. Thus, it is appropriate to enter judgment at this time.” slip op. at 4
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted
“claims at issue in the instant proceeding, namely claims 1–14. Mot. to Amend. In email correspondence to Board administrative staff dated July 17, 2014 and July 18, 2014, counsel for Petitioner indicated that Petitioner does not oppose Patent Owner’s Motion to Amend.6 Patent Owner’s Motion to Amend, cancelling claims 1–14, is granted. Pursuant to 37 C.F.R. § 42.73(b), a party may request judgment against itself at any time during a proceeding. Cancellation of one or more claims, such that the patent owner has no remaining claim in the trial, is construed to be a request for adverse judgment. 37 C.F.R. § 42.73(b)(2). Here, Patent Owner requests cancellation of all claims of the ’580 patent on which a trial was instituted, such that Patent Owner would have no remaining claim in the trial. Thus, it is appropriate to enter judgment at this time.” slip op. at 4
- Additional discoveryNot reached
“MOTION FOR AUTHORIZATION TO COMPEL TESTIMONY Petitioner’s Motion for Authorization to Compel Testimony is dismissed as moot because judgment is being entered against Patent Owner on the challenged claims.” slip op. at 4
NonePatents in suitUS 8,321,580
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.