- Google LLC v. Ecofactor, Inc.Adverse judgmentPTAB · Oct 1, 2025 · IPR2025-00097 · APJ Brent M Dougal · IPR · Adverse judgment
The Board granted EcoFactor’s request for adverse judgment after it disclaimed claims 1–18 and terminated the proceeding.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“A party before the Board “may request judgment against itself at any time during a proceeding.” 37 C.F.R. § 42.73(b). “Cancellation or disclaimer of a claim such that the party has no remaining claim in the trial” constitutes a request for adverse judgment. 37 C.F.R. § 42.73(b)(2). As all claims of the ’394 Patent have been disclaimed, Patent Owner’s request for adverse judgment is granted, and the proceeding is terminated.” slip op. at 2
NonePatents in suitUS 11,835,394 - Asetek Danmark A/S v. Coolit Systems, Inc.Adverse judgmentPTAB · Sep 4, 2024 · IPR2020-00747 · APJ Scott C Moore · IPR · Adverse judgment
The Board entered adverse judgment against Petitioner as to claims 1, 2, 3, 5, 7, and 25 after deeming it to have abandoned the contest.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“an Order to Show Cause directing Petitioner to file a paper showing cause why the Board should not enter adverse judgment against Petitioner for abandonment of the contest under § 42.73(b). Paper 46, 3–4. Our Order explicitly provided “if Petitioner does not file such a paper by August 5, 2024, Petitioner shall be deemed to have abandoned the contest under 37 C.F.R. § 42.73(b), and to thereby have requested adverse judgment against itself.” Id. at 4. Petitioner did not file any response. Thus, pursuant to 37 C.F.R. § 42.73(b) and the explicit terms of our July 30, 2024, Order, Petitioner is hereby deemed to have abandoned the contest and requested adverse judgment against itself. The Board, accordingly, enters adverse judgement against Petitioner as to all challenged claims.” slip op. at 3
- RemandOther
“This case is before us on remand from the Court of Appeals for the Federal Circuit. See CoolIT Sys., Inc. v. Vidal, No. 2022-1221, 2024 WL 981364 (Fed. Cir. Mar. 7, 2024). In our initial Final Written Decision, we found that all claims challenged by Asetek Danmark A/S (“Petitioner”) in U.S. Patent 9,057,567 B2 (the “’567 patent”) had been shown to be unpatentable. Paper 42. CoolIT Systems, Inc. (“Patent Owner”) appealed, and the Federal Circuit vacated our judgment and remanded the case to us for reconsideration under a revised construction of the claim term “matingly engaged.” CoolIT, 2024 WL 981364, at *6. Prior to the Federal Circuit’s decision, however, Petitioner “moved to voluntarily dismiss [its] cross-appeal and withdraw from the case upon privately settling its dispute” with Patent Owner. Id. at *3.” slip op. at 2
NonePatents in suitUS 9,057,567 - ROKU, Inc. v. Universal Electronics Inc.Adverse judgmentPTAB · Dec 28, 2023 · IPR2021-00263 · APJ Russell E Cass · IPR · Adverse judgment
The Board entered adverse judgment against Patent Owner on claims 1–11 because Patent Owner cancelled all challenged claims in a co-pending reexamination.
RulingsAdverse judgment- RehearingRehearing, grantedGranted
“After our Denial Decision, the Director issued an Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (“Interim Fintiv Guidance”)1, directing that “[t]he PTAB will not discretionarily deny petitions based on applying Fintiv to a 1 The Interim Fintiv Guidance is available at https://www.uspto.gov/ sites/default/files/documents/interim_proc_discretionary_denials_ aia_parallel_district_court_litigation_memo_20220621_.pdf. parallel ITC proceeding.” Interim Fintiv Guidance, 7. Following the Federal Circuit’s decision, we conducted a conference call with counsel for the parties and allowed the parties to submit additional briefing to address the status of the case, the status of any related proceedings, the Interim Fintiv Guidance, and any actions that should be taken by the panel at this point concerning this proceeding. Papers 16–18. After considering the parties’ arguments, we granted Petitioner’s Request for Rehearing on February 8, 2023, concluding that, in light of the Interim Fintiv Guidance, exercising discretion to deny institution under 35 U.S.C. § 314(a) was not warranted in this case. Paper 19, 5–12. We also determined that Petitioner had demonstrated a reasonable likelihood of success in proving that the challenged claims were unpatentable, and instituted an inter partes review of claims 1–11 of the ’317 patent with respect to all grounds set forth in the Petition. Id. at 12–37.” slip op. at 2
- Adverse judgmentAdverse judgmentGranted
“(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: . . . (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). In the ’074 Reexam, Patent Owner cancelled all of challenged claims 1–11, and the USPTO has issued a Reexamination Certificate indicating that these claims are cancelled. Ex. 2100, 2; Ex. 1046, 1:15. The Board has previously construed a patent owner’s cancellation in a reexamination of all claims challenged in a pending IPR as a request for adverse judgment under § 42.73(b). See Tarsco Bolted Tank Inc. v. Tank Connection, LLC, IPR2016-01634, Paper 16 at 2 (PTAB Aug. 24, 2017) (“Cancellation of claims 1–11” in an ex parte reexamination “is construed as a request for adverse judgment” in the corresponding IPR proceeding.); Mercedes-Benz USA, LLC v. Signal IP, Inc., IPR2015-00941, Paper 21 at 2–3 (PTAB Apr. 14, 2016) (“Pursuant to 37 C.F.R. § 42.73(b), we construe cancellation of all claims involved in this proceeding” in “a concurrent Reexamination of the” patent at issue “as a request for adverse judgment.”). We agree with the prior decisions in Tarsco and Mercedes-Benz that a patent owner’s cancellation of all challenged claims in an IPR in a co-pending ex parte reexamination is properly construed as a request for adverse judgment under 37 C.F.R. § 42.73(b). Consequently, we construe Patent Owner’s cancellation of all of the claims challenged in this IPR in the ’074 Reexam as a request for adverse judgment.” slip op. at 5
NonePatents in suitUS 10,600,317 - 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 - Ford Motor Company v. Safe Driving Technologies LLCAdverse judgmentPTAB · Nov 14, 2022 · IPR2021-01353 · APJ Ryan H Flax · IPR · Adverse judgment
The Board entered adverse judgment against Patent Owner after it disclaimed claims 1–7 and 14–16, the only claims at issue, and terminated the proceeding.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“A party may request judgment against itself at any time during a proceeding. 37 C.F.R. § 42.73(b). Actions constituting 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.” Id. Patent Owner has disclaimed, under 37 C.F.R. § 1.321(a), claims 1–7 and 14–16 of the ’709 patent, and has requested that the Board enter adverse judgment against it with respect to these claims, the only claims at issue in this proceeding. Ex. 3002; Paper 14. Having reviewed Patent Owner’s disclaimer and request, we determine that entry of judgment against Patent Owner with respect to claims 1–7 and 14–16 of the ’709 patent is appropriate.” slip op. at 2
NonePatents in suitUS 10,532,709 - LG Electronics, Inc. / LG Electronics U.S.A., Inc. et al. v. Cypress Semiconductor Corp.Adverse judgmentPTAB · May 22, 2015 · IPR2014-01342 · APJ Patrick M Boucher · IPR · Adverse judgment
The Board granted Patent Owner’s request for adverse judgment and entered judgment against Patent Owner on claims 1–4 after disclaimer of all claims in the proceeding.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“On May 12, 2015, Patent Owner filed an executed disclaimer of claims 1–4, i.e. all of the claims involved in this proceeding, with a representation that the disclaimer “will be electronically filed with the United States Patent and Trademark Office.” Paper 19. The disclaimer is construed as a request for adverse judgment. 37 C.F.R. § 42.73(b)(2) (“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 request is granted. Accordingly, it is ORDERED that Patent Owner’s request for adverse judgment is granted; and FURTHER ORDERED that judgment is herein entered against Patent Owner with respect to claims 1–4.” slip op. at 1
NonePatents in suitUS 8,004,497
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.