- Luxottica Of America Inc. v. E-Vision Smart Optics, Inc.Adverse judgmentPTAB · Mar 31, 2026 · IPR2025-00216 · APJ John D Hamann · IPR · Adverse judgment
The Board granted the Patent Owner’s request for adverse judgment after disclaimer of claims 1–20.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“Our Rules provide that “[a] party may request judgment against itself at any time during a proceeding,” and that “[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.” 37 C.F.R. § 42.73(b)(2). Such is the case here. Thus, we grant Patent Owner’s unopposed Request for Adverse Judgment.” slip op. at 2
NonePatents in suitUS 11,487,138 - PTAB · Nov 1, 2024 · IPR2024-01010 · APJ Brian D Range · IPR · Institution
The Board instituted inter partes review of claims 1–6 and 8 on all petition grounds and granted Texas Instruments’ motion to join the NXP IPR as an understudy petitioner.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Thus, for the same reasons set forth in our institution decision in the NXP IPR, we determine that the information presented in the Petition shows a reasonable likelihood that Petitioner would prevail in showing that claims 1–6 and 8 are unpatentable. See NXP Dec. Accordingly, we institute an inter partes review of the same claims on the same grounds as the ones on which we instituted review in the NXP IPR. 35 U.S.C. § 314(a).” slip op. at 5
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Petitioner agrees that, if joinder is granted, it will have an “understudy role.” Id. at 2–3, 6–8. Petitioner agrees to various restrictions as an understudy. Id. Along these lines, Petitioner will abide by the following conditions so long as NXP is actively participating in this proceeding: (a) TI shall not make any substantive filing and shall be bound by the filings of Petitioner NXP, unless a filing concerns termination and settlement, or issues solely involving TI; (b) TI shall not present any argument or make any presentation at oral argument unless an issue solely involves TI, or when addressing Board-approved motions that do not affect Petitioner NXP or its respective position; (c) TI shall not seek to cross-examine or defend the cross-examination of any witness, unless the topic of cross-examination concerns issues solely involving TI; (d) TI shall not seek discovery from Patent Owner on issues not solely involving TI; (e) TI will not rely on expert testimony beyond that submitted by Petitioner NXP unless Petitioner NXP is terminated from the case. If Petitioner NXP is not terminated from the case, TI agrees to rely entirely on, and be bound by, the expert declarations and depositions in the NXP IPR. Mot. 6–7. In sum, TI “will not assume an active role unless Petitioner NXP ceases to participate in the proceeding.” Mot. 2.13 The conditions above mean that joinder will have no impact on the NXP IPR trial schedule and will not complicate the NXP IPR briefing or discovery. These understudy provisions are consistent with the provisions imposed by, for example, Ecobee Techs. ULC v. EcoFactor, Inc., IPR 2022-01460, IPR2022-00473, Paper 7 (PTAB Jan. 24, 2023) and Apple Inc. v. INVT SPE LLC, IPR2019-00959, Paper 8 (PTAB May 30, 2019).” slip op. at 6
NonePatents in suitUS 7,345,245 - PTAB · Jun 14, 2024 · IPR2024-00461 · APJ Ken B Barrett · IPR · Institution
The Board instituted IPR on claims 28 and 29 on all petitioned grounds and granted Nokia’s motion to join IPR2023-00978 as an understudy petitioner.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“inter partes review, “the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” 35 U.S.C. § 325(d). Patent Owner argues that we should discretionarily deny the Petition because “[t]he Board and the Federal Circuit have already conducted inter partes review of Claims 28 and 29 of the ’931 Patent based on the Vornefeld reference and confirmed the patentability of the claims,” and, “while Nokia now cites additional prior art references, those new references add nothing of significance to Vornefeld and the other prior art references previously considered by the Board and the Federal Circuit.” Prelim. Resp. 45.” slip op. at 11
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied
“could find that Nokia is or was an indemnitor to Sprint, Patent Owner is left with the allegation that Nokia and Sprint have a pertinent relationship with each other because current Petitioner Nokia was a supplier of prior petitioner Sprint at the time of the Sprint IPR and Sprint Litigation. See Prelim. Resp. 54–55. Patent Owner does not direct our attention to any evidence indicating the substance of that relationship. See id. Without more, we cannot discern whether there was a standard customer-manufacturer relationship or whether there was, as Patent Owner alleges, a “significant relationship.” Prelim. Resp. 55. We determine, on the record in this case, that the mere existence of a supplier-customer relationship does not tend to show that Nokia is a real party in interest or privy of Sprint as argued by Patent Owner. See, e.g., WesternGeco LLC, 889 F.3d at 1321 (“a contractual and fairly standard customer-manufacturer relationship regarding the accused product” does not necessarily establish privity); Wi-Fi One, LLC, 887 F.3d at 1340–41 (affirming the Board’s determination that there was an inadequate showing of privity or of a real party in interest relationship even though the “evidence showed that Broadcom’s interests as to the issue of infringement were generally aligned with those of its customers”).” slip op. at 17
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). For the reasons that follow, we institute an inter partes review as to both of the challenged claims of the ’931 patent on all the grounds of unpatentability set forth in the Petition. We also grant Petitioner’s Motion for Joinder.” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“entitled to the requested relief. 37 C.F.R. § 42.20(c). In deciding whether to join a case, we consider: (1) the reasons why joinder is appropriate, (2) whether the petition raises any new grounds of unpatentability, (3) any impact that joinder would have on the cost and trial schedule for the existing review, and (4) whether joinder will add to the complexity of briefing or discovery. Kyocera Corp. v. Softview LLC, IPR2013-00004, Paper 15, 4 (PTAB Apr. 24, 2013); Trial Practice Guide9 at 76. Petitioner contends that “joinder with the Verizon IPR is appropriate because Nokia’s Petition includes identical arguments and the same grounds raised in the existing Verizon IPR proceeding (i.e., challenges the same claims of the same patent, relies on the same expert declaration, and is based on the same grounds and combinations of prior art submitted in the Verizon Petition).” Mot. 5. According to Petitioner, “good cause exists for joining Nokia to the Verizon IPR proceeding so that the Board can efficiently ‘secure the just, speedy, and inexpensive resolution’ of Nokia’s and Verizon’s petitions in a single proceeding.” Id. (quoting 37 C.F.R. § 42.1(b)). Petitioner also represents that it will act as an “understudy,” and that it “agrees to adhere to all applicable deadlines set forth in the Verizon IPR Scheduling Order,” and contends that, accordingly, the trial schedule should not be adversely impacted by the joinder. Id. at 2, 6. Petitioner further asserts that, because no new issues are being introduced by the requested joinder, “Patent Owner will . . . not be required to provide any additional analysis or arguments beyond what it will already provide in” slip op. at 24
Discretionary denialPatents in suitUS 7,230,931 - PTAB · Jun 14, 2024 · IPR2024-00392 · APJ Ken B Barrett · IPR · Institution
The Board instituted IPR on claims 28 and 29 of the ’931 patent on all petition grounds and granted Ericsson’s motion to join IPR2023-00978 as an understudy petitioner.
RulingsInstitution decision- PTAB / AIA Trials › §315(e) estoppelEstoppel does not applyDecided for petitioner
“[The inquiry into whether a party is in privity with another] is grounded in due process concerns for both the petitioner . . . and the opposing party . . . . In other words, the inquiry has a dual-focus on preventing the petitioner from now lodging a successive attack for which it already had a first bite, thus, protecting the defending party from an unwarranted second attack, while also ensuring that the petitioner is not unfairly limited in its ability to lodge its challenges if it has not had a full and fair opportunity to do so already. Uniloc 2017 LLC v. Facebook Inc., 989 F.3d 1018, 1028 (Fed. Cir. 2021) (citations omitted). Accordingly, “the reach of privity cannot extend beyond the limits of due process.” WesternGeco LLC v. ION Geophysical Corp., 889 F.3d 1308, 1319 (Fed. Cir. 2018). “[A] person who was not a party to a suit generally has not had a ‘full and fair opportunity to litigate’ the claims and issues settled in that suit.” Id. (quoting Taylor, 553 U.S. at 894). “Because nonparty preclusion risks binding those who have not had a full and fair opportunity to litigate, the Supreme Court has cautioned that there is a general rule against nonparty preclusion, subject to certain exceptions.” Id. (citing, inter alia, Taylor, 553 U.S. at 892–93). The Supreme Court in Taylor identified considerations where nonparty preclusion would be justified, including:” slip op. at 12
- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“Section 315(b) provides: An 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, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent. The time limitation set forth in the preceding sentence shall not apply to a request for joinder under subsection (c). The referenced subsection (c) of section 315 is the provision under which Petitioner has filed its Motion for Joinder. Mot. 1. Patent Owner reiterates its argument that prior petitioner Sprint is Petitioner’s privy, and argues that, therefore, Petitioner is time-barred under § 315(b) because Sprint was served with a complaint more than a year prior to the filing of the Petition in the present case. See Prelim. Resp. 26–27. Patent Owner relies again, as the basis for the privity argument, on the determinations made in the Regents IPR and argues that “Ericsson must similarly be time-barred.” Id. We do not agree with Patent Owner. The statute provides that “[t]he time limitation set forth in [§ 315(b)] shall not apply to a request for joinder under [§ 315(c)].” 35 U.S.C. § 315(b). Because Petitioner’s Motion is a request for joinder under § 315(c), the statutory one-year time-bar does not apply.” slip op. at 18
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“inter partes review, “the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” 35 U.S.C. § 325(d). Patent Owner argues that we should discretionarily deny the Petition because “[t]he Board and the Federal Circuit have already conducted inter partes review of Claims 28 and 29 of the ’931 Patent based on the Vornefeld reference and confirmed the patentability of the claims,” and, “while Ericsson now cites additional prior art references, those new references add nothing of significance to Vornefeld and the other prior art references previously considered by the Board and the Federal Circuit.” Prelim. Resp. 49. 12 Patent Owner, in the Introduction section of the Preliminary Response, argues that “strong grounds exist here for the Board to exercise its discretion to deny the petition under 35 U.S.C. § 325(d) and Fintiv.” Prelim. Resp. 2–3. Although the Preliminary Response contains sections arguing for discretionary denial under § 325(d) and General Plastic, it does not contain a section discussing Fintiv. See, e.g., id. at ii–iii (Table of Contents, heading G). We understand the Fintiv reference to be an inadvertent holdover from Patent Owner’s very similar preliminary response filed in the Verizon IPR. We, in the Verizon IPR, instituted an inter partes review of the ’931 patent on both challenged claims and all asserted grounds of unpatentability. IPR2023-00978, Paper 20 at 54–55. In the Verizon IPR, we addressed Patent Owner’s arguments that we should exercise discretion to deny institution under § 325(d), and we declined to deny institution on that basis. Id. at 22–27. Petitioner here represents that “[t]he instant Petition is substantially identical to the Verizon Petition; it involves the same claims of the same patent, the same grounds of unpatentability, and the same supporting evidence.” Mot. 1. Patent Owner’s § 325(d) arguments in the case currently before us appear to be substantively identical to those made in the preliminary response in the Verizon IPR, with the substitution of “Ericsson” for “Verizon.” Compare Prelim. Resp. 49–55 with IPR2023- 00978, Paper 15 at 46–53. For the same reasons set forth in our Institution Decision in the Verizon IPR, we decline to discretionarily deny institution under § 325(d) in the current case brought by Petitioner Ericsson. IPR2023- 00978, Paper 20 at 22–27.” slip op. at 20
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDenied
“On the record before us, no real party in interest, privity, or otherwise legally significant relationship has been shown to exist between current Petitioner Ericsson and prior petitioner Sprint that might warrant denying a follow-on petition by a different petitioner. As such, General Plastic factor 1 weighs against denying institution. “[W]here, as here, the first and second petitioners are neither the same party, nor possess a significant relationship under Valve, General Plastic factor one necessarily outweighs the other General Plastic factors.” Videndum Prod. Sols., Inc. v. Rotolight Ltd., IPR2023-01218, Paper 12 at 5– 6 (Vidal Apr. 19, 2024); see id. (“Under USPTO policy and precedent, General Plastic has not been extended to any cases in which the first and second petitioners do not have a significant relationship.”); see also Alcatel- Lucent USA Inc. v. Oyster Optics, LLC, IPR2017-02146, Paper 12 at 12 (PTAB Feb. 28, 2018) (non-precedential) (“Once resolution of factor 1 indicates that Petitioner had not previously filed a petition against the same patent, factors 2–5 bear little relevance unless there is evidence in the record of extenuating circumstances such as a showing that there was a previous petitioner who challenged the same patent and that the previous petitioner and the current petitioner planned the staggered petitions.”).” slip op. at 24
Discretionary denialPatents in suitUS 7,230,931 - Snap Inc. v. Playvuu, Inc.Adverse judgmentPTAB · Feb 29, 2024 · IPR2023-00848 · APJ Barbara A Parvis · IPR · Adverse judgment
The Board granted Patent Owner’s request for adverse judgment and entered judgment against Patent Owner on claims 1–11 after abandonment.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“Judgment (Paper 14, “Request for Adverse Judgment”), which states “[p]ursuant to 37 C.F.R. § 42.73(b)(4) Patent Owner makes this request for the Board to enter adverse judgment against Patent Owner with respect to claims 1-11” of the ’911 patent. Id. at 1. Patent Owner further states “Patent Owner makes this request because Patent Owner is not filing a Patent Owner Response and is abandoning this proceeding.” Id. Upon review of Patent Owner’s unopposed Request for Adverse Judgment, we grant the request for adverse judgment pursuant to 37 C.F.R. § 42.73(b)(4).” slip op. at 2
NonePatents in suitUS 10,931,911 - Motorola Mobility LLC v. Largan Precision Co., Ltd.All claims unpatentablePTAB · Dec 8, 2023 · IPR2022-01022 · APJ John D Hamann · IPR · Final written decision
Claims 15 and 18 are unpatentable as obvious over KR872; substitute claims 26 and 27 are unpatentable, and the contingent motion to amend is denied.
RulingsFinal written decision- BurdenFwd all claims unpatentableUnpatentable
“Accordingly, we are persuaded that one of ordinary skill in the art would have understood that KR872 was a good starting point, and would perceived a reasonable expectation of success in implementing an f-number within the claimed range (e.g., 2.0) with KR872’s lens system. We also note that Fischer teaches that “[y]ou can use a patent as a starting point”—KR872 is a published patent application. Ex. 1029, 172; Ex. 1004, face. Accordingly, for the reasons above, we find that Petitioner has shown” slip op. at 34
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Accordingly, we are persuaded that one of ordinary skill in the art would have understood that KR872 was a good starting point, and would perceived a reasonable expectation of success in implementing an f-number within the claimed range (e.g., 2.0) with KR872’s lens system. We also note that Fischer teaches that “[y]ou can use a patent as a starting point”—KR872 is a published patent application. Ex. 1029, 172; Ex. 1004, face. Accordingly, for the reasons above, we find that Petitioner has shown” slip op. at 34
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“Accordingly, we are persuaded that one of ordinary skill in the art would have understood that KR872 was a good starting point, and would perceived a reasonable expectation of success in implementing an f-number within the claimed range (e.g., 2.0) with KR872’s lens system. We also note that Fischer teaches that “[y]ou can use a patent as a starting point”—KR872 is a published patent application. Ex. 1029, 172; Ex. 1004, face. Accordingly, for the reasons above, we find that Petitioner has shown” slip op. at 34
- Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia outweighedDecided for petitioner
“Motion for Additional Discovery seeking information via an interrogatory to Patent Owner relating to indicia of non-obviousness. Paper 26.2 Patent Owner filed an Opposition to this motion. Paper 27. We granted Petitioner’s Motion for Additional Discovery, and ordered Patent Owner to respond to the interrogatory. Paper 57,3 12. Patent Owner filed its verified interrogatory response as Exhibit 2041. We also authorized the parties to file papers concerning the significance of the produced information. Paper 57, 12. Petitioner filed an Explanation of the Significance of Patent Owner’s” slip op. at 3
Patent outcomesUS 8,514,499 unpatentable§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 8,514,499 - Motorola Mobility LLC v. Largan Precision Co., Ltd.Adverse judgmentPTAB · Jul 12, 2023 · IPR2022-01172 · APJ Jon M Jurgovan · IPR · Adverse judgment
The Board entered adverse judgment against Patent Owner on claims 1–4, 6, and 9 after it disclaimed those claims.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“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(a), claims 1–4, 6, and 9 of the ’397 patent, and explicitly requests that the Board enter adverse judgment against it with respect to claims 1–4, 6, and 9, the only claims at issue in this trial. Ex. 3001. Based on Patent Owner’s communication, and our review of Exhibit 2029, we determine that entry of judgment against Patent Owner with respect to claims 1–4, 6, and 9 of the ’397 patent is appropriate.” slip op. at 2
NonePatents in suitUS 10,564,397 - Vizio, Inc. v. Maxell, Ltd.InstitutedPTAB · Jul 6, 2023 · IPR2023-00316 · APJ Terrence W Mcmillin · IPR · Institution
The Board instituted review of claims 2–9 on all petitioned grounds and granted Vizio’s motion to join IPR2022-01348.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Petitioner challenges claims 2–9 of the ’394 patent based on the same grounds advanced in IPR2022- 01348 as follows: slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Section 315(c) “authorizes joinder of a person as a party, not ‘joinder’ of two proceedings” and “does not authorize the joined party to bring new issues from its new proceeding into the existing proceeding.” Facebook, Inc. v. Windy City Innovations, LLC, 973 F.3d 1321, 1335 (Fed. Cir. 2020). The Board “routinely grants motions for joinder where the party seeking joinder introduces identical arguments and the same grounds raised in the existing proceeding.” Samsung Elecs. Co., Ltd. v. Raytheon Co., IPR2016- 00962, Paper No. 12 at 9 (PTAB Aug. 24, 2016) (internal quotations and citations omitted). Petitioner makes an unopposed showing that joinder is appropriate.” slip op. at 4
NonePatents in suitUS 8,170,394 - Motorola Mobility LLC v. Largan Precision Co., Ltd.Adverse judgmentPTAB · Jun 30, 2023 · IPR2022-01170 · APJ Norman H Beamer · IPR · Adverse judgment
The Board entered adverse judgment against Patent Owner on claims 1–2 and 6–10 after their disclaimer, and vacated all scheduled due dates.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“II. 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(a), claims 1–2 and 6–10 of the ’487 patent, and explicitly requests that the Board enter adverse judgment against it with respect to claims 1–2 and 6–10, the only claims at issue in this trial. Ex. 3001. Based on Patent Owner’s communication, and our review of Exhibit 2024, we determine that entry of judgment against Patent Owner with respect to claims 1–2 and 6–10 of the ’487 patent is appropriate.” slip op. at 2
NonePatents in suitUS 10,209,487 - Apple Inc. v. MPH Technologies OYAdverse judgmentPTAB · May 11, 2023 · IPR2019-00820 · APJ John D Hamann · IPR · Adverse judgment
On remand, the Board entered adverse judgment against Patent Owner as to claim 4 based on its statutory disclaimer and terminated the proceeding.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“We agree with Petitioner and determine that Patent Owner requested adverse judgment against itself by filing a statutory disclaimer for claim 4. Pet. Rem. Open. 2–3. In particular, “[a]ctions construed to be a request for adverse judgment include . . . disclaimer of a claim such that the party has no remaining claim in the trial.” 37 C.F.R. § 42.73(b). Here, claim 4 was the sole remanded claim. Apple, 2022 WL 4103286, at *8 (remanding only claim 4 for this proceeding).” slip op. at 3
- RemandOther
“We agree with Petitioner and determine that Patent Owner requested adverse judgment against itself by filing a statutory disclaimer for claim 4. Pet. Rem. Open. 2–3. In particular, “[a]ctions construed to be a request for adverse judgment include . . . disclaimer of a claim such that the party has no remaining claim in the trial.” 37 C.F.R. § 42.73(b). Here, claim 4 was the sole remanded claim. Apple, 2022 WL 4103286, at *8 (remanding only claim 4 for this proceeding).” slip op. at 3
NonePatents in suitUS 7,937,581
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.