- 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 - 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 - Askeladden LLC v. Dekel ShilohAdverse judgmentPTAB · Jan 27, 2022 · IPR2020-01415 · APJ Steven M Amundson · IPR · Adverse judgment
The Board entered adverse judgment against Patent Owner on claims 1–19 after finding he abandoned the contest by failing to file mandatory notices or other papers.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“adverse judgment should not be entered against Patent Owner in view of his failure to file mandatory notices. Paper 8. The Order explained that the Board’s rules provide that “[a] party may request adverse judgment against itself at any time during a proceeding” and that “[a]ctions construed to be a request for adverse judgment include . . . [a]bandonment of the contest.” Id. at 3 (quoting 37 C.F.R. § 42.73(b)). The Order also explained that “[f]ailure to participate in a proceeding, such as failure to file mandatory notices according to 37 C.F.R. § 42.8(b), may be considered abandonment of the contest and result in adverse judgment against a patent owner under 37 C.F.R. § 42.73(b).” Id. (citing Cellpak, Inc. v. Mambate USA Inc., IPR2021-00007, Paper 4 at 2 (PTAB Mar. 23, 2021)). The Order gave” slip op. at 3
NonePatents in suitUS 8,112,405 - Denso Corporation v. Netlatch, LLCAdverse judgmentPTAB · Mar 8, 2016 · IPR2015-00473 · APJ Ken B Barrett · IPR · Adverse judgment
The Board granted Continental’s request for adverse judgment as patent owner for claims 14, 17, 27, and 31.
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). Pursuant to 37 C.F.R. § 42.73(b)(3), “[c]oncession of unpatentability” may be construed as a request for adverse judgment. We understand Continental to expressly request entry of adverse judgment against itself as the current patent owner. IPR2015-00481, Continental’s Ownership Statement 5. Additionally, we treat Continental’s concession that certain challenged claims are unpatentable (id. at 5; see IPR2015-00481, Paper 4 (Petition) 3–4 (challenging claims 14, 17, 31, and 33 of the ’431 patent)) as a request for adverse judgment at least as to those claims. 37 C.F.R. § 42.73(b)(3). Under these circumstances, entry of judgment adverse to Patent Owner Continental is appropriate.” slip op. at 7
- PTAB / AIA Trials › Real party in interest / privityDecided for patent owner
“assignment, and found that neither weighed in favor of Mr. Wingard. Id. at 9–10. The Court ultimately found, “at the time of the [bankruptcy] filing, that the patent was owned by Mr. Wingard personally, and, therefore, became part of the [Bankruptcy] Estate,” and the Court granted the Trustee’s motion to sell the patent. Id. at 10, 11; see also Ex. 1020 (Order granting the motion). The time to appeal the order has expired and no appeal was sought. Ex. 1017, 2 (citing Fed. R. Bankr. P. 8002). In an assignment dated December 17, 2015, the Bankruptcy Trustee assigned to Continental the entire right, title, and interest in the ’431 patent. Ex. 1017. An assignment from the Trustee to Continental Automotive GmbH is recorded in the USPTO at Reel/Frame 037329/0544. Ex. 3001. II. ANALYSIS In light of the Bankruptcy Court’s Order and the authorized sale of the ’431 patent, we recognize Continental as the current owner of the ’431 patent for purposes of this inter partes review proceeding. Continental asserts in the related 481 case: “because Continental is now the patent owner and has represented that the 431 patent claims are invalid, the claims should be found unpatentable either by way of a final determination or in response to a request for adverse judgment.” IPR2015-00481, Continental’s Ownership Statement 5.6 Continental also indicates that the same request” slip op. at 6
NonePatents in suitUS 5,530,431 - PTAB · Mar 8, 2016 · IPR2015-00481 · APJ Ken B Barrett · IPR · Adverse judgment
The Board granted Continental’s request for adverse judgment on claims 14, 17, 31, and 33 after Continental, as patent owner, conceded those claims were unpatentable.
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). Pursuant to 37 C.F.R. § 42.73(b)(3), “[c]oncession of unpatentability” may be construed as a request for adverse judgment. 5 Continental also asserts that Netlatch should be dismissed as a party and that all papers filed by Netlatch expunged. Continental’s Ownership Statement 5. Continental does not persuade us that those steps are necessary. See 37 C.F.R. § 41.14 (“The record of a proceeding, including documents and things, shall be made available to the public, except as otherwise ordered.”); Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,760 (Aug. 14, 2012) (referring to “the public’s interest in maintaining a complete and understandable file history”). We understand Continental to expressly request entry of adverse judgment against itself as the current patent owner. Continental’s Ownership Statement 5. Additionally, we treat Continental’s concession that the challenged claims are unpatentable (id. at 5; see Pet. 3–4) as a request for adverse judgment. 37 C.F.R. § 42.73(b)(3). Under these circumstances, entry of judgment adverse to Patent Owner Continental is appropriate.” slip op. at 6
NonePatents in suitUS 5,530,431 - Maxmind, Inc. v. Fraud Control Systems.Com CorporationAdverse judgmentPTAB · Dec 17, 2015 · CBM2015-00094 · APJ James A Worth · CBM · Adverse judgment
The Board entered adverse judgment against the Patent Owner and cancelled claims 1–30 after the Patent Owner requested cancellation.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“DISCUSSION A party may request entry of adverse judgment against itself at any time during a proceeding. 37 C.F.R. § 42.73(b). Here, Patent Owner requests adverse judgment with cancellation of claims 1–30 of the ’942 patent. Under these circumstances, entry of judgment adverse to the Patent Owner and cancellation of claims 1–30 of the ʼ942 patent are appropriate. CONCLUSION AND ORDER Patent Owner’s Request to Abandon Contest is granted. It is, therefore, ORDERED that adverse judgment against the Patent Owner is entered under 37 C.F.R. § 42.73(b); FURTHER ORDERED that this constitutes a final written decision under 35 U.S.C. § 318(a); and FURTHER ORDERED that claims 1–30 of U.S. Patent No. 8,630,942 B2 be CANCELLED.” slip op. at 2
NonePatents in suitUS 8,630,942 - Norman International, Inc. v. Hunter Douglas Inc.Adverse judgmentPTAB · Oct 16, 2015 · IPR2014-01175 · APJ Linda M Gaudette · IPR · Adverse judgment
The Board entered adverse judgment against Patent Owner on claim 7 after it disclaimed the sole claim at issue.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“DISCUSSION A party may request judgment against itself at any time during a 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.” Id. Patent Owner has disclaimed, under 37 C.F.R. § 1.321, claim 7 of the ’884 patent, and explicitly requests that the Board enter adverse judgment against it with respect to claim 7, the sole claim at issue in this trial. Paper 29, 1. Having reviewed the Disclaimer and Request, we determine that entry of judgment against Patent Owner with respect to claim 7 of the ’884 patent is appropriate.” slip op. at 2
NonePatents in suitUS 6,968,884 - Google Inc. / Linkedin Corp. v. Priceplay.Com, Inc.Adverse judgmentPTAB · Sep 28, 2015 · CBM2015-00024 · APJ Thomas L Giannetti · CBM · Adverse judgment
The Board entered adverse judgment against Patent Owner and ordered claims 1–18 cancelled after Patent Owner requested to abandon the contest.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“DISCUSSION A party may request entry of adverse judgment against itself at any time during a proceeding. 37 C.F.R. § 42.73(b). Here, Patent Owner has requested to abandon the contest, which is construed as a request for adverse judgment. 37 C.F.R. § 42.73(b)(4). Under these circumstances, entry of judgment adverse to the Patent Owner and cancellation of claims 1–18 of the ʼ917 patent are appropriate.” slip op. at 2
NonePatents in suitUS 8,494,917 - ZTE (USA), Inc. v. Pragmatus Mobile LLCAdverse judgmentPTAB · Aug 11, 2014 · IPR2014-00670 · APJ Glenn J Perry · IPR · Adverse judgment
The Board granted the parties’ joint motion and terminated the proceeding by settlement before deciding the petition.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“The parties have requested that these trial proceedings be terminated pursuant to a settlement. On August 5, 2014, the Board authorized (Paper 8) the parties to file a Joint Motion to Terminate this proceeding along with a true copy of any and all settlement agreements between them related to the patent at issue. On August 8, 2014, the parties filed a Joint Motion to Terminate (Paper 9) in accordance with 35 U.S.C. § 327(a) and 37 C.F.R. § 42.72. The parties also filed a Joint Motion to Treat the Parties’ Settlement Agreement as Business Confidential pursuant to 35 U.S.C. § 317(b) and Rule 42.74 (Paper 10). The settlement agreement (Paper 11), marked “Confidential,” purports to settle matters between the parties with respect to the patent at issue in this inter partes review. This inter partes review is in its preliminary stage. A decision on the Corrected Petition (Paper 4) has not yet been rendered. The parties have not identified any other USPTO proceedings related to the patent at issue. Under these circumstances, the Board determines that it is appropriate to enter judgment1 and terminate the trial without rendering a final written decision under 37 C.F.R. § 42.72.” slip op. at 2
NonePatents in suitUS 8,466,795
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.