- Apple Inc. v. Ald Social, LLCAdverse judgmentPTAB · Jul 23, 2024 · IPR2023-01399 · APJ Barbara A Benoit · IPR · Adverse judgment
The Board entered adverse judgment against ALD Social, LLC on claims 1–16 of the ’158 patent and terminated IPR2023-01399 after finding Patent Owner unequivocally abandoned the contest.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“judgment against itself at any time during a proceeding, and abandonment of the contest is construed by the Board to be a request for adverse judgment. See IPR2023-01398, Paper 8, 3 (citing 37 C.F.R. § 42.73(b)); IPR2023-01399, Paper 7, 3 (citing 37 C.F.R. § 42.73(b)). Our orders also stated: Under the specific circumstances of this case, we determine Patent Owner’s failure to file long-overdue mandatory notices required by 37 C.F.R. § 42.8(a)(2) to demonstrate Patent Owner’s abandonment of the contest. Under 37 C.F.R. § 42.5(c), in the particular circumstances of this case, and in the interests of justice, we set a deadline for Patent Owner to file mandatory notices pursuant to 37 C.F.R. § 42.8(a)(2) no later than June 10, 2024. IPR2023-01398, Paper 8, 4 (emphasis in original); IPR2023-01399, Paper 7, 4 (emphasis in original). Our orders further explained that we “would view, in the particular circumstances of this case, Patent Owner’s filing of mandatory notices by the deadline as an indication that Patent Owner had not abandoned the contest.” IPR2023-01398, Paper 8, 4; IPR2023-01399, Paper 7, 4.” slip op. at 5
NonePatents in suitUS 9,402,158 - Apple Inc. v. Ald Social, LLCAdverse judgmentPTAB · Jul 23, 2024 · IPR2023-01398 · APJ Barbara A Benoit · IPR · Adverse judgment
The Board entered adverse judgment against ALD Social, LLC on claims 1–14 of the ’054 patent and terminated IPR2023-01398 after finding unequivocal abandonment.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“judgment against itself at any time during a proceeding, and abandonment of the contest is construed by the Board to be a request for adverse judgment. See IPR2023-01398, Paper 8, 3 (citing 37 C.F.R. § 42.73(b)); IPR2023-01399, Paper 7, 3 (citing 37 C.F.R. § 42.73(b)). Our orders also stated: Under the specific circumstances of this case, we determine Patent Owner’s failure to file long-overdue mandatory notices required by 37 C.F.R. § 42.8(a)(2) to demonstrate Patent Owner’s abandonment of the contest. Under 37 C.F.R. § 42.5(c), in the particular circumstances of this case, and in the interests of justice, we set a deadline for Patent Owner to file mandatory notices pursuant to 37 C.F.R. § 42.8(a)(2) no later than June 10, 2024. IPR2023-01398, Paper 8, 4 (emphasis in original); IPR2023-01399, Paper 7, 4 (emphasis in original). Our orders further explained that we “would view, in the particular circumstances of this case, Patent Owner’s filing of mandatory notices by the deadline as an indication that Patent Owner had not abandoned the contest.” IPR2023-01398, Paper 8, 4; IPR2023-01399, Paper 7, 4.” slip op. at 5
NonePatents in suitUS 9,198,054 - Shenzen Chic Electrics Co., Ltd. v. Pilot, Inc.Adverse judgmentPTAB · Jul 1, 2024 · IPR2023-00810 · APJ Jeffrey W Abraham · IPR · Adverse judgment
The Board entered adverse judgment against Patent Owner on claims 1–30 after it disclaimed the entire term of the patent.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“The Board construes the disclaimer of a patent as a request for adverse judgment. 37 C.F.R. § 42.73(b)(1) (“Actions construed to be a request for adverse judgment include . . . [d]isclaimer of the involved . . . patent.”). In this case, the Board instituted trial on claims 1–30 of the ’971 patent, and Patent Owner subsequently filed a disclaimer of the entire term of the ’971 Patent. Ex. 2002. Accordingly, we construe Patent Owner’s disclaimer as a request for adverse judgment, and we grant that request.” slip op. at 2
NonePatents in suitUS 11,376,971 - China Chengda Engineering Co., Ltd. v. Doriamo Ltd.Adverse judgmentPTAB · Nov 20, 2023 · IPR2023-00365 · APJ Jeffrey W Abraham · IPR · Adverse judgment
The Board entered adverse judgment against Doriamo Ltd. for claims 1–10 after it did not oppose judgment and abandoned the contest.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“II. DISCUSSION “A party may request [adverse] judgment against itself at any time during a proceeding.” 37 C.F.R. § 42.73(b). “Actions construed to be a request for adverse judgment include . . . [a]bandonment of the contest.” Id. Based on Patent Owner’s failure to file substantive papers in this proceeding and its statement that it does not oppose entry of adverse judgment, we determine that entry of judgment against Patent Owner with respect to claims 1–10 of the ’852 patent is appropriate.” slip op. at 2
NonePatents in suitUS 8,591,852 - 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 - Stmicroelectronics, Inc. v. The Trustees Of Purdue UniversityAdverse judgmentPTAB · Sep 29, 2022 · IPR2022-00309 · APJ Jo-Anne M Kokoski · IPR · Adverse judgment
The Board granted Patent Owner’s request for adverse judgment after disclaimer of all claims, entering judgment against claims 1, 6, 7, and 10-12 and terminating the proceeding.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“Rule 42.73(b) permits a party to “request adverse judgment against itself at any time during a proceeding.” 37 C.F.R. § 42.73(b). In addition, “[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.” Id. § 42.73(b)(2). Because Patent Owner disclaimed all claims in the ’112 patent, there are no challenged claims remaining in the proceeding, and we grant Patent Owner’s Request for Adverse Judgment.” slip op. at 2
NonePatents in suitUS 8,035,112 - Trienda Holdings, L.L.C. v. Desgagné, Brown Et Associés Inc.Adverse judgmentPTAB · May 20, 2022 · IPR2021-01295 · APJ James J Mayberry · IPR · Adverse judgment
Adverse judgment was entered against the Patent Owner on claims 1–15 after it abandoned the contest; the Board did not decide the merits.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“Our rules provide that “[a] party may request judgment against itself at any time during a proceeding.” 37 C.F.R. § 42.73(b) (2021). Moreover, pursuant to our rules, “[a]ctions construed to be a request for adverse judgment include . . . [a]bandonment of the contest.” Id. § 42.73(b)(4). We consider Patent Owner’s statement that it will not further participate in this proceeding to constitute an abandonment of the contest, and, therefore, a request for judgment against it, which we grant. Also, “[a] patent applicant or owner is precluded from taking action inconsistent with the adverse judgment, including obtaining in any patent: (i) A claim that is not patentably distinct from a finally refused or canceled claim.” 37 C.F.R. § 42.73(d)(3). Although we instituted a trial, we have not yet decided the merits of this proceeding. Accordingly, we enter adverse judgment against Patent Owner pursuant to 37 C.F.R. § 42.73(b), and terminate the trial pursuant to 37 C.F.R. § 42.72.” slip op. at 2
NonePatents in suitUS 10,570,276 - Polygroup Services N.A., Inc. v. Willis Electric Co., Ltd.Adverse judgmentPTAB · Dec 17, 2021 · IPR2021-00489 · APJ Jeffrey W Abraham · IPR · Adverse judgment
The Board granted Patent Owner’s unopposed request for adverse judgment and terminated the IPR.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“II. DISCUSSION Under 37 C.F.R. § 42.73(b), “[a] party may request judgment against itself at any time during a proceeding.” As permitted by this Rule, Patent Owner has explicitly asked the Board to enter adverse judgment against Patent Owner under 37 C.F.R. § 42.73(b). Paper 11, 1. Having reviewed Patent Owner’s unopposed request for adverse judgment, we determine that entry of judgment against Patent Owner is appropriate. Thus, we grant the request for adverse judgment pursuant to 37 C.F.R. § 42.73(b). III. ORDER Accordingly, it is ORDERED that adverse judgment is entered against Patent Owner and this inter partes review is terminated pursuant to 37 C.F.R. § 42.73(b).” slip op. at 2
NonePatents in suitUS 9,671,097 - 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 - Avx Corporation v. Greatbatch Ltd.Adverse judgmentPTAB · Nov 19, 2015 · IPR2015-00713 · APJ Jon B Tornquist · IPR · Adverse judgment
The Board granted Patent Owner’s request for adverse judgment and cancelled claims 1, 2, 8, 9, 23, 24, 30, and 31.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“proceeding. 37 C.F.R. § 42.73(b). Actions construed to be a request for adverse judgment include disclaimer of the involved application or patent and cancellation or disclaimer of a claim such that the party has no remaining claim in the trial. Id. In light of Patent Owner’s disclaimer of claims 1–44 of the ’077 patent, we determine that entry of judgment against Patent Owner with respect to claims 1, 2, 8, 9, 23, 24, 30, and 31 of the ’077 patent is appropriate.” slip op. at 2
NonePatents in suitUS 7,035,077
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.