- Google LLC v. 138 East LCD Advancements LimitedAdverse judgmentPTAB · May 21, 2025 · IPR2024-00956 · APJ Brian P Murphy · IPR · Adverse judgment
The Board granted Patent Owner’s request for adverse judgment after it disclaimed claims 1–12, entering judgment against Patent Owner on those claims.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“§ 1.321(a) disclaiming all of the claims at issue in this proceeding, namely, claims 1–12 of the ’574 Patent. Ex. 2002; see also Paper 14, 2 (citing 37 C.F.R. § 1.321(a)). On May 16, 2025, Patent Owner filed a Request For Adverse Judgment stating that Patent Owner “requests judgment against itself under 37 C.F.R. § 42.73(b)(2), with respect to claims 1-12” of the ’574 patent. Paper 14, 2. Such a “disclaimer is binding upon the grantee and its successors or assigns.” 37 C.F.R. § 1.321(a). Pursuant to our rules, “[a] party may request judgment against itself at any time during a proceeding,” which includes “[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). See Arthrex, Inc. v. Smith & Nephew, Inc., 880 F.3d 1345, 1350 (Fed. Cir. 2018) (“there is no claim remaining for trial . . . when, as here, all of the challenged claims have been cancelled”). For the reasons given above, we grant Patent Owner’s Request for Adverse Judgment pursuant to 37 C.F.R. § 42.73(b)(2). ORDER In consideration of the foregoing, it is hereby: ORDERED that Patent Owner’s Request for Adverse Judgment pursuant to 37 C.F.R. § 42.73(b)(2) is granted; and FURTHER ORDERED that adverse judgment is entered against Patent Owner with respect to claims 1–12 of the ’574 patent.” slip op. at 2
NonePatents in suitUS 8,355,574 - Apple Inc. v. Corephotonics Ltd.Adverse judgmentPTAB · Feb 11, 2022 · IPR2018-01146 · APJ Monica S Ullagaddi · IPR · Adverse judgment
The Board entered adverse judgment against Patent Owner on claims 6 and 14 after their disclaimer, then terminated the proceeding.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“II. ANALYSIS Actions construed as 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). Here, Patent Owner has disclaimed claims 6 and 14 (along with unchallenged claims 3–5 and 8–11) of the ’712 patent under 35 U.S.C. § 253 according to the procedures set forth in 37 C.F.R. § 1.321(a). Ex. 3002, 1. We agree with Petitioner that 37 C.F.R. § 42.73(b) provides that the Board should construe Patent Owner’s statutory disclaimer to be a request that the Board enter adverse judgment against it with respect to claims 6 and 14, the only claims at issue, in this proceeding. Ex. 3001; see also Unified Patents, LLC v. Arsus, LLC, IPR2020-00948, Paper 18 at 2 (PTAB Jan. 27, 2021) (construing statutory disclaimer of all challenged claims as request for adverse judgment), aff’d, Case No. 2021- 1648, 2021 WL 5315423 (Fed. Cir. Nov. 16, 2021). Having reviewed the Disclaimer (Ex. 3002), we determine that entry of adverse judgment against Patent Owner with respect to claims 6 and 14 of the ’712 patent is appropriate. Claims 1, 2, 7, 12, 13, 15–17, and 19 are no longer part of this IPR proceeding because we made a final judgment with regard to these claims and that judgment has not been reversed or vacated. See 37 C.F.R. § 42.2 (“A decision is final only if it disposes of all necessary issues with regard to the party seeking judicial review, and does not indicate that further action is required.” (emphasis added)). As such, these claims are not “in the trial” within the meaning of 37 C.F.R. § 42.73(b)(2). The Federal Circuit remanded the Decision as to only claims 6 and 14. As such, our determination of adverse judgment does not apply to claims 1, 2, 7, 12, 13, 15–17, and 19. Patent Owner’s Disclaimer of claims 6 and 14 means that Patent Owner has no claims remaining in the present proceeding.” slip op. at 3
NonePatents in suitUS 9,568,712 - 10x Genomics, Inc. v. The University Of ChicagoAdverse judgmentPTAB · Feb 3, 2016 · IPR2015-01162 · APJ Donna M Praiss · IPR · Adverse judgment
The Board granted Patent Owner’s request for adverse judgment and ordered claims 1–13 cancelled.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“DISCUSSION Under 37 C.F.R. § 42.73(b), a party may request judgment against itself at any time during a proceeding. Here, Patent Owner requests cancellation of all claims and entry of adverse judgment. Paper 20, 1. Under these circumstances, entry of judgment adverse to the Patent Owner and cancellation of claims 1–13 is appropriate.” slip op. at 2
NonePatents in suitUS 8,273,573 - Capsugel Belgium NV v. Innercap Technologies, Inc.Adverse judgmentPTAB · Jan 31, 2014 · IPR2013-00331 · APJ Christopher L Crumbley · IPR · Adverse judgment
The Board granted the patent owner’s request for adverse judgment and cancelled claims 2-5, 7-14, 16-21, and 24-26.
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. Cancellation or disclaimer of one or more claims, such that the patent owner has no remaining claim in the trial, is construed to be a request for adverse judgment. 37 C.F.R. § 42.73(b)(2). Innercap has not only requested cancellation of all claims on which trial was instituted in this inter partes review, such that after the cancellation it will have no remaining claim in the trial, but also expressly requested entry of adverse judgment. Accordingly, it is hereby ORDERED that patent owner Innercap’s Request for Entry of Adverse Judgment is granted; and FURTHER ORDERED that claims 2-5, 7-14, 16-21, and 24-26 of US Patent No. 8,361,497 are cancelled.” slip op. at 2
NonePatents in suitUS 8,361,497 - Hitachi Cable America Inc. v. Belden Inc.Adverse judgmentPTAB · Jan 30, 2014 · IPR2013-00408 · APJ Christopher L Crumbley · IPR · Adverse judgment
The Board granted the parties’ joint motion and terminated IPR2013-00408 after settlement, without a final written decision.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“The parties have requested that this trial proceeding be terminated pursuant to a settlement. On January 22, 2014, the Board authorized the parties to file a joint request to terminate and to file the settlement agreement as business confidential under 37 C.F.R. 42.74(c). Paper 11. The parties filed the joint motion to terminate pursuant to 35 U.S.C. § 317 on January 27, 2014. Paper 12. Accompanying the motion, the parties filed a true copy of a settlement agreement along with a joint request to treat the settlement agreement as business confidential, to be kept separate from the patent file pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74. Paper 13; Ex. 1008. A decision by the Board to institute a trial was entered on December 30, 2013. Paper 9. This matter, however, is in its preliminary stages. In their joint motion, the parties represent that they jointly requested that the related district court litigation involving Patent 5,563,377, Belden Inc. v. Hitachi Cable America Inc., et al., Case No. 1:12-cv-1724 (S.D. Ind.), be dismissed with prejudice. Under these circumstances, the Board determines that it is appropriate to enter judgment and terminate the trial without rendering a final written decision. 37 C.F.R. § 42.72. Therefore, the joint motion to terminate the proceeding is granted.” slip op. at 1
NonePatents in suitUS 5,563,377
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.