- Netflix, Inc.Adverse judgmentPTAB · Mar 18, 2024 · IPR2022-01568 · APJ Barbara A Parvis · IPR · Adverse judgment
The Board denied Netflix’s requests for adverse judgment and to expunge Patent Owner’s papers, then dismissed and terminated the proceeding without a final written decision.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentDenied
“(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: (1) Disclaimer of the involved application or patent; (2) Cancellation or disclaimer of a claim such that the party has no remaining claim in the trial; (3) Concession of unpatentability or derivation of the contested subject matter; and (4) Abandonment of the contest. 37 C.F.R. § 42.73(b). Based on the record before us, we do not find that any action has been taken by Mr. Valjakka or Suomen Biisi Oy during this proceeding that is properly construed as a request for adverse judgment. Mr. Valjakka has not taken any of the actions set forth in 37 C.F.R. § 42.73(b)(1)–(4). Mr. Valjakka has not filed or requested a disclaimer of the patent or cancellation of any claim. Mr. Valjakka also has not conceded unpatentability or abandoned the contest. To the contrary, Mr. Valjakka filed a Patent Owner Response (Paper 9), a Sur-reply (Paper 15), and a Request for Oral Argument (Paper 16). Additionally, following the District Court’s Order, Mr. Valjakka seeks to continue to act as the patent owner in this proceeding. Resp. Br. 4.” slip op. at 5
- PTAB / AIA Trials › Real party in interest / privityOther
“The circumstances of the instant proceeding starkly contrast those in FedEx, in which the district court granted a motion to dismiss without determining patent ownership. FedEx, IPR2017-01786, Paper 28, 16. In the instant proceeding, Netflix and Mr. Valjakka agree that we should not make an independent determination as to whether Mr. Valjakka has established that he has standing to take action as patent owner in these proceedings because the proper venue is the District Court, which already decided against Mr. Valjakka and granted Netflix’s Motion for Summary Judgment. Ex. 3001, 14. Based on the record before us, we decline to make an independent determination as to whether Mr. Valjakka has standing to act as a patent owner in this proceeding. Accordingly, we deny Netflix’s request to terminate this proceeding and expunge Mr. Valjakka’s papers and exhibits on the basis of our making an independent determination that Mr. Valjakka does not have standing to act as a patent owner.” slip op. at 9
NonePatents in suitUS 8,495,167 - 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 - Early Warning Services, LLC v. Fintech Innovation Associates LLCAdverse judgmentPTAB · Feb 17, 2023 · PGR2022-00046 · APJ Robert L Kinder · PGR · Adverse judgment
The Board entered adverse judgment against Patent Owner after it disclaimed the sole challenged claim, which the Board cancelled.
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.” slip op. at 3
None - Tarsco Bolted Tank Inc. v. Tank Connection, LLCAdverse judgmentPTAB · Aug 25, 2017 · IPR2016-01634 · APJ Meredith C Petravick · IPR · Adverse judgment
The Board entered adverse judgment against Patent Owner on claims 1–11 after their cancellation and Patent Owner’s abandonment of the contest.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“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.” 37 C.F.R. § 42.73(b)(2). Ex Parte Reexamination Certificate No. 9,187,921 C1, canceling claims 1–11 of the ’921 patent, issued on July 24, 2017. Ex. 3001; see Paper 14 (memorializing a conference call during which Patent Owner indicated that it was allowing the claims to be canceled in the reexamination intentionally). Claims 1–11 are all of the claims of the ’921 patent and all claims at issue in this inter partes review. Cancellation of claims 1–11 is construed as a request for adverse judgment. Additionally, “[a]ctions construed to be a request for adverse judgment include: . . . [a]bandonment of the contest.” 37 C.F.R. § 42.73(b)(4). Patent Owner did not file a Patent Owner’s Response or a Motion to Amend in this inter partes review by the May 17, 2017 deadline, set in the Scheduling Order (Paper 13), and did not file a paper in response to the Order to Show Cause by the August 22, 2017 deadline. Patent Owner’s lack of response is consistent with abandonment of the contest. Abandonment of the contest is construed as a request for adverse judgement. slip op. at 2
NonePatents in suitUS 9,187,921 - American Honda Motor Co., Inc. v. Signal IP, Inc.Adverse judgmentPTAB · Apr 14, 2016 · IPR2015-01002 · APJ Josiah C Cocks · IPR · Adverse judgment
The Board granted Signal IP’s request for adverse judgment after cancellation of all claims remaining in the trial: claims 8–11, 13, 15, and 17.
RulingsAdverse judgment- 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.” slip op. at 2
NonePatents in suitUS 6,775,601 - Mercedes-Benz USA, LLC v. Signal IP, Inc.Adverse judgmentPTAB · Apr 14, 2016 · IPR2015-00941 · APJ Josiah C Cocks · IPR · Adverse judgment
The Board entered adverse judgment against Signal IP after cancellation of all challenged claims 8–11, 13, 15, and 17.
RulingsAdverse judgment- 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: . . .” slip op. at 2
NonePatents in suitUS 6,775,601 - 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 - PTAB · Dec 7, 2015 · IPR2015-00624 · APJ Charles J Boudreau · IPR · Adverse judgment
The Board entered adverse judgment against the patent owner and canceled claims 27, 28, 38, and 39.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“DISCUSSION A party may request entry of adverse judgment against itself at any time during a proceeding. See 37 C.F.R. § 42.73(b). Here, in view of Patent Owner’s explicit request for adverse judgment, entry of judgment adverse to Patent Owner and cancellation of claims 27, 28, 38, and 39 of the ’872 patent are appropriate. Further, because “[a] judgment . . . disposes of all issues that were, or by motion reasonably could have been, raised and decided,” 37 C.F. R. § 42.73(a), we dismiss Patent Owner’s co-pending Request to Terminate Proceeding as moot.” slip op. at 2
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Other
“Patent Owner and cancellation of claims 27, 28, 38, and 39 of the ’872 patent are appropriate. Further, because “[a] judgment . . . disposes of all issues that were, or by motion reasonably could have been, raised and decided,” 37 C.F. R. § 42.73(a), we dismiss Patent Owner’s co-pending Request to Terminate Proceeding as moot. ORDER Accordingly, it is ORDERED that Patent Owner’s Request for Adverse Judgment is” slip op. at 3
NonePatents in suitUS 7,456,872 - American Honda Motor Co., Inc. / Honda Of Amercia Mfg., Inc. et al. v. Signal IP, Inc.Adverse judgmentPTAB · Nov 24, 2015 · IPR2015-01005 · APJ Charles J Boudreau · IPR · Adverse judgment
The Board entered adverse judgment against Patent Owner on claims 1, 2, 6-9, 13, 14, 21, 22, 26-29, 33, and 34 after cancellation and disclaimer left no trial claims.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“proceeding. 37 C.F.R. § 42.73(b). Under the Rules, 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.” 37 C.F.R. § 42.73(b)(2). Here, claims 21, 26, and 28 of the ’486 patent were cancelled in Reexamination Certificate US 6,434,486 C1 (Ex. 2004), and Patent Owner subsequently disclaimed, under 37 C.F.R. § 1.321, claims 1, 2, 6–9, 13, 14, 22, 23, 27, 29, 30, 33, 34, and 35 of the ’486 patent (Ex. 2005). 1 Patent Owner filed copies of the reexamination certificate and statutory disclaimer referenced in its Updated Notices as Exhibits 2004 and 2005, respectively. Paper 11, 2. Because Patent Owner disclaimed, inter alia, claims 1, 2, 6–9, 13, 14, 22, 27, 29, 33, and 34 of the ’486 patent, constituting all of the claims involved in this trial that had not already been cancelled in the reexamination certificate, we construe Patent Owner’s statutory disclaimer as a request for entry of adverse judgment.” slip op. at 2
NonePatents in suitUS 6,434,486
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.