- 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 - 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 - 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 - Precision Power, LLC v. Powertec Solutions International, LLCAdverse judgmentPTAB · Nov 29, 2021 · PGR2021-00043 · APJ Terrence W Mcmillin · PGR · Adverse judgment
The Board entered adverse judgment against Patent Owner after it abandoned the contest; claims 1–7 were canceled and the proceeding terminated.
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). Moreover, certain actions taken by a party, such as “[a]bandonment of the contest,” can be construed as a request for adverse judgment against that party. Id. § 42.73(b)(4). 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. It is: ORDERED that adverse judgment is entered against Patent Owner; FURTHER ORDERED that claims 1–7 of U.S. Patent No. 10,637,264” slip op. at 2
NonePatents in suitUS 10,637,264 - NEC Display Solutions Of America / NEC Display Solutions, Ltd. v. Cascades Projection LLCAdverse judgmentPTAB · Jan 28, 2016 · IPR2015-01841 · APJ Howard B Blankenship · IPR · Adverse judgment
The Board entered adverse judgment against Patent Owner on claims 1, 17, and 61 after their statutory disclaimer, and terminated the proceeding.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“Under 37 C.F.R. § 42.73(b), a party may request judgment against itself at any time during a proceeding. 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)). No claim remains to be adjudicated in this proceeding. ORDER Accordingly, it is ORDERED that adverse judgment is entered against Patent Owner with respect to claims 1, 17, and 61 of the ’347 patent; and FURTHER ORDERED that this proceeding is terminated.” slip op. at 2
NonePatents in suitUS 7,688,347 - Christie Digital Systems USA, Inc. v. Cascades Projection LLCAdverse judgmentPTAB · Dec 16, 2015 · IPR2015-01342 · APJ Howard B Blankenship · IPR · Adverse judgment
The Board entered adverse judgment against Patent Owner on claims 1, 17–19, 27, 28, 60, 61, 68, and 71–73 and terminated the proceeding.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“Under 37 C.F.R. § 42.73(b), a party may request judgment against itself at any time during a proceeding. 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)). No claim remains to be adjudicated in this proceeding. ORDER Accordingly, it is ORDERED that adverse judgment is entered against Patent Owner with respect to claims 1, 17–19, 27, 28, 60, 61, 68, and 71–73 of the ’347 patent; and” slip op. at 2
NonePatents in suitUS 7,688,347 - Hewlett-Packard Company v. Yyz LLCAdverse judgmentPTAB · Dec 16, 2015 · CBM2015-00050 · APJ Richard E Rice · CBM · Adverse judgment
The Board granted adverse judgment based on Patent Owner’s abandonment and cancelled claims 51, 52, and 55–57 of U.S. Patent No. 7,603,674 B2.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“Under 37 C.F.R. § 42.73(b)(4), a party may request judgment against itself at any time during a proceeding. Actions construed to be a request for such an adverse judgment include abandonment of the contest. We find that Patent Owner’s actions and admissions, as set forth in the Motion, constitute abandonment of these CBM Proceedings, and we determine based on such abandonment that Patent Owner has requested adverse judgment under 37 C.F.R. § 42.73(b)(4) in both proceedings.” slip op. at 2
NonePatents in suitUS 7,603,674 - Hewlett-Packard Company v. Yyz LLCAdverse judgmentPTAB · Dec 16, 2015 · CBM2015-00049 · APJ Richard E Rice · CBM · Adverse judgment
The Board granted adverse judgment based on Patent Owner’s abandonment and ordered claims 22–23, 27–29 of the ’749 patent and claims 51–52, 55–57 of the ’674 patent cancelled.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“Under 37 C.F.R. § 42.73(b)(4), a party may request judgment against itself at any time during a proceeding. Actions construed to be a request for such an adverse judgment include abandonment of the contest. We find that Patent Owner’s actions and admissions, as set forth in the Motion, constitute abandonment of these CBM Proceedings, and we determine based on such abandonment that Patent Owner has requested adverse judgment under 37 C.F.R. § 42.73(b)(4) in both proceedings.” slip op. at 2
NonePatents in suitUS 7,062,749 - 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 - LG Display Co., Ltd v. Innovative Display Technologies LLCAdverse judgmentPTAB · Jun 10, 2015 · IPR2014-01357 · APJ Thomas L Giannetti · IPR · Adverse judgment
The Board entered adverse judgment against Patent Owner at its request and cancelled claims 1–4, 16, and 26.
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 cancellation of each claim for which inter partes review has been instituted, and thus Patent Owner has no remaining claim in the trial. Id. § 42.73(b)(2). Under these circumstances, the entry of judgment adverse to the Patent Owner and cancellation of the claims as requested is appropriate. CONCLUSION AND ORDER Patent Owner’s request for entry of adverse judgment is granted. It is, therefore, ORDERED that adverse judgment against the Patent Owner is entered under 37 C.F.R. § 42.73(b);” slip op. at 2
NonePatents in suitUS 6,755,547
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.