- 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 - Rackspace US, Inc. / Rackspace Hosting, Inc. v. Personalweb Technologies, LLC And Level 3 CommunicationsAdverse judgmentPTAB · Oct 28, 2014 · IPR2014-00057 · APJ Joni Y Chang · IPR · Adverse judgment
The Board granted the parties’ joint motions, terminated the instituted inter partes reviews as to all parties, and entered judgment after settlement.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“a proceeding will terminate after the filing of a settlement agreement, unless the Board already has decided the merits of the proceedings. Id. In their Joint Motions to Terminate, the parties indicate that they have settled all of their disputes involving the Rackspace inter partes reviews, as well as the related district court proceeding styled PersonalWeb Tech. LLC v. Rackspace US, Inc., No. 6-12-cv-00659 (E.D. Tex.). Mot. 1, 4. The parties also indicate that they concurrently filed their Stipulation of Dismissal, as to only the Rackspace Defendants with prejudice, in that related district court proceeding. Id.; Ex. 2019. More importantly, the parties expressly state that “no other disputes between the parties remain,” and “[t]here is no other litigation or dispute in any court or forum involving [Rackspace and PersonalWeb].” Id. at 4. Upon consideration of the facts before us, we determine that it is appropriate to terminate the Rackspace inter partes reviews as to both parties, and enter judgment.” slip op. at 5
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“3. However, Google’s Petitions were not filed timely in accordance with 35 U.S.C. § 315(b) (“[a]n inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner . . . is served with a complaint alleging infringement of the patent.”).3 Google could have, but did not, file a petition for inter partes review with the one-year time period. More significantly, Google’s Motions for Joinder were not filed timely in accordance with 37 C.F.R. § 42.122(b) (“[a]ny request for joinder must be filed, as a motion under § 42.22, no later than one month after the institution date of any inter partes review for which joinder is requested.”).4 Google fails to provide sufficient reasons as to why we should exercise our discretion under 37 C.F.R. § 42.5(b) to waive the one-month time limit for filing a Motion for Joinder.5” slip op. at 4
NonePatents in suitUS 5,978,791 - 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.