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  • PTAB · Sep 8, 2025 · IPR2024-01228 · APJ Kimberly Mcgraw · IPR · Adverse judgment

    The Board granted Patent Owner’s withdrawal of its motion to amend and entered adverse judgment on the disclaimed challenged claims, terminating the IPR.

    RulingsAdverse judgment
    • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted

      “In view of the facts presented, including that no decision as to the patentability of the proposed substitute claims has yet been made and Petitioner does not oppose the withdrawal, we grant Patent Owner’s Motion to Withdraw its Motion to Amend.” slip op. at 2

    • Adverse judgmentAdverse judgmentGranted

      “Under our rules, a party may request adverse judgment against itself at any time during a proceeding, including by disclaiming all claims involved in a trial. 37 C.F.R. §42.73(b). Because Patent Owner’s request to withdraw its Motion to Amend has been granted and Patent Owner has disclaimed all Challenged Claims such that no claims remain in the trial, we grant Patent Owner’s Motion to Terminate by Adverse Judgment.” slip op. at 3

    None
    Patents in suitUS 11,656,422
  • PTAB · Sep 8, 2025 · IPR2024-01227 · APJ Christopher M Kaiser · IPR · Adverse judgment

    The Board granted Patent Owner’s withdrawal of its motion to amend and entered adverse judgment after it disclaimed challenged claims 1–5 and 8–13, terminating the IPR.

    RulingsAdverse judgment
    • Adverse judgmentAdverse judgmentGranted

      “Under our rules, a party may request adverse judgment against itself at any time during a proceeding, including by disclaiming all claims involved in a trial. 37 C.F.R. §42.73(b). Because Patent Owner’s request to withdraw its Motion to Amend has been granted and Patent Owner has disclaimed all Challenged Claims such that no claims remain in the trial, we grant Patent Owner’s Motion to Terminate by Adverse Judgment.” slip op. at 3

    • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted

      “In view of the facts presented, including that no decision as to the patentability of the proposed substitute claims has yet been made and Petitioner does not oppose the withdrawal, we grant Patent Owner’s Motion to Withdraw its Motion to Amend.” slip op. at 2

    None
    Patents in suitUS 11,435,542
  • PTAB · Dec 3, 2024 · IPR2023-01387 · APJ Mahshid D Saadat · IPR · Adverse judgment

    The Board granted Patent Owner’s request for adverse judgment after it disclaimed all challenged claims 1–16 and 19.

    RulingsAdverse judgment
    • Adverse judgmentAdverse judgmentGranted

      “II. Discussion Per 37 C.F.R. § 42.73(b), a party may request judgment against itself at any time during a proceeding. Also, actions which are construed to be a request for adverse judgement include “[c]ancellation or disclaimer of a claim such that the party has no remaining claim in the trial.” Id. at § 42.73(b)(2). With the filing by Patent Owner of a statutory disclaimer of all challenged claims 1–16 and 19 in this proceeding, there are no remaining claims in this trial.” slip op. at 2

    None
    Patents in suitUS 8,204,737
  • PTAB · Dec 3, 2024 · IPR2023-01386 · APJ Jameson Lee · IPR · Adverse judgment

    The Board granted Patent Owner’s request for adverse judgment after it disclaimed all challenged claims 1–12 and did not respond to the show-cause order.

    RulingsAdverse judgment
    • Adverse judgmentAdverse judgmentGranted

      “at any time during a proceeding. Also, actions which are construed to be a request for adverse judgement include “[c]ancellation or disclaimer of a claim such that the party has no remaining claim in the trial.” Id. at § 42.73(b)(2). With the filing by Patent Owner of a statutory disclaimer of all challenged claims 1–12 in this proceeding, there are no remaining claims in this trial. Because Patent Owner did not respond to the Show Cause Order, we construe Patent Owner’s statutory disclaimer of all challenged claims 1–12 as a request for entry of adverse judgment against Patent Owner. The request is granted.” slip op. at 2

    None
    Patents in suitUS 6,904,405
  • 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

    None
    Patents in suitUS 7,456,872
  • PTAB · Jan 6, 2015 · IPR2014-01247 · APJ Peter P Chen · IPR · Adverse judgment

    The Board granted Patent Owner’s request to cancel challenged claims 31 and 32 and entered adverse judgment against Patent Owner before institution.

    RulingsAdverse judgment
    • Adverse judgmentAdverse judgmentGranted

      “of claims 31 and 32 (Paper 19). Under 37 C.F.R. § 42.73(b), cancellation of all challenged claims leaving no remaining claims for trial is construed as a request for entry of adverse judgment. ORDER Accordingly, it is ORDERED that Patent Owner’s request to cancel claims 31 and 32 of U.S. Patent No. 5,954,781, is granted; and FURTHER ORDERED that adverse judgment is entered herein against Patent Owner.” slip op. at 2

    None
    Patents in suitUS 5,954,781
  • PTAB · Apr 15, 2014 · IPR2013-00343 · APJ Jacqueline Wright Bonilla · IPR · Adverse judgment

    The Board granted PPC’s request for adverse judgment against itself and entered judgment against PPC on claims 1–6.

    RulingsAdverse judgment
    • Adverse judgmentAdverse judgmentGranted

      “Owner’s Request for Adverse Judgment Under 37 C.F.R. § 42.73(b)” (“Request”). Paper 26; see also Paper 25. The Request states that “[i]n the interest of streamlining the proceedings and focusing its resources, the Patent Owner decided to cancel all of the claims (1-6) of the 8,313,353 Patent involved in this proceeding.” Paper 26 at 1. In the Request, PPC requests cancellation of all claims at issue in this proceeding, i.e., claims 1-6 of U.S. Patent No. 8,313,353 B2 (“the ’353 patent) (Ex. 1001). Id. We note that 37 C.F.R. § 42.73(b)(2) indicates that the Board will construe cancellation of all claims at issue in a trial as a request for adverse judgment. Along these lines, PPC also requests that the Board enter a final adverse judgment against PPC. Id.1 We grant PPC’s request to cancel claims 1-6 of the ’353 patent. We also grant PPC’s request for entry of adverse judgment against itself in this proceeding.” slip op. at 2

    None
    Patents in suitUS 8,313,353
  • PTAB · Apr 1, 2014 · IPR2013-00421 · APJ Michael W Kim · IPR · Adverse judgment

    The Board granted the Patent Owner’s request for adverse judgment and ordered claims 1, 2, 5, and 6 unpatentable.

    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). No Patent Owner response or motion to amend has been filed and the deadline for filing such papers has passed. Under these circumstances, the Request for Entry of Adverse Judgment is appropriate. CONCLUSION The Patent Owner’s Request for Entry of Adverse Judgment is herein granted.” slip op. at 2

    None
    Patents in suitUS 7,359,782
  • PTAB · Feb 27, 2014 · IPR2013-00381 · APJ Denise M Pothier · IPR · Adverse judgment

    The Board granted Patent Owner’s request for adverse judgment and cancelled claims 1–4, 8, 9, 17–22, 25–29, 33, 34, and 41.

    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). No motion to amend claims has been filed. Under these circumstances, entry of adverse judgment against Patent Owner is appropriate.” slip op. at 2

    None
    Patents in suitUS 7,485,968
  • PTAB · Aug 6, 2013 · IPR2013-00134 · APJ Jameson Lee · IPR · Adverse judgment

    The Board granted ContentGuard’s request for adverse judgment and cancellation of claims 12-22 and 30-38 of Patent 7,225,160.

    RulingsAdverse judgment
    • Adverse judgmentAdverse judgmentGranted

      “Discussion Under 35 U.S.C. § 42.73(b), a party may request judgment against itself at any time during a proceeding. Also, under 37 C.F.R. § 42.73(b)(2), actions construed as a request for entry of adverse judgment include cancellation of a claim such that the party has no remaining claim in the trial. ContentGuard has not only requested cancellation of all claims involved 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.” slip op. at 2

    None
    Patents in suitUS 7,225,160
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