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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 · Apr 17, 2024 · IPR2023-00754 · APJ Garth D Baer · IPR · Adverse judgment

    The Board entered adverse judgment against Patent Owner as to claim 7 after Patent Owner abandoned the contest, and terminated the proceeding.

    RulingsAdverse judgment
    • Adverse judgmentAdverse judgmentGranted

      “(Paper 2, “Pet.”), requesting an inter partes review of claim 7 of U.S. Patent No. 8,060,675 B2 (Ex. 1001, “the ’675 patent”). After Shamrock Innovations, LLC (“Patent Owner”) filed a Waiver of Preliminary Response, we instituted inter partes review of claim 7. Paper 8. On January 9, 2024, Patent Owner notified the Board that it “has elected not the contest the IPR” because the patent at issue “expired August 6, 2018” and “given the limited amount of money at stake” in this case. Ex. 3001. Petitioner requests that we enter adverse judgment against Patent Owner under 37 CFR § 42.73(b) and terminate this proceeding. Ex. 3002. We construe Patent Owner’s abandonment of the contest as a request for adverse judgment. See 37 C.F.R. § 42.73(b)(4). Accordingly, it is ORDERED that adverse judgement is entered against Patent Owner as” slip op. at 2

    None
    Patents in suitUS 8,060,675
  • PTAB · Feb 15, 2023 · IPR2022-00163 · APJ Scott A Daniels · IPR · Adverse judgment

    The Board entered adverse judgment against the Patent Owner on claims 1–8, 10–13, and 15–25 after those claims were statutorily disclaimed.

    RulingsAdverse judgment
    • Adverse judgmentAdverse judgmentGranted

      “indicating that all challenged claims had been disclaimed, requesting adverse judgment under 37 C.F.R. § 42.73(b)(2), and entering the respective Disclaimer, dated November 16, 2022, into the record of this proceeding as Exhibit 2020. Paper 18. Patent Owner’s disclaimer of claims 1–8, 10–13, and 15–25 means that Patent Owner has no claims remaining in the present proceeding and adverse judgement is therefore appropriate. II. ORDER In consideration of the foregoing, it is hereby: ORDERED that adverse judgment is entered under 37 C.F.R. § 42.73(b) against Patent Owner with respect to claims 1–8, 10–13, and 15– 25 of the ’647 patent; and” slip op. at 2

    None
    Patents in suitUS 10,243,647
  • PTAB · Feb 22, 2017 · IPR2016-00123 · APJ Jason J Chung · IPR · Adverse judgment

    The Board granted West View’s request for adverse judgment and canceled claims 22, 42, 75, and 77 after the patent owner requested their cancellation.

    RulingsAdverse judgment
    • Adverse judgmentAdverse judgmentGranted

      “time during a proceeding. 37 C.F.R. § 42.73(b). Actions construed to be a request for adverse judgment include, among other things, cancellation or disclaimer of a claim such that the party has no remaining claim in the trial. 37 C.F.R. § 42.73(b)(2). West View has requested that we cancel claims 22, 42, 75, and 77, which are all of the remaining challenged claims involved in this trial. Given that West View has no remaining claims in this trial, entry of adverse judgment against West View and cancellation of all of the challenged claims of the ’037 patent is appropriate.” slip op. at 2

    None
    Patents in suitUS 8,719,037
  • PTAB · Apr 4, 2016 · IPR2015-01469 · APJ Karl D Easthom · IPR · Adverse judgment

    The Board entered adverse judgment against Gold Charm Limited and ordered claims 1 and 5 cancelled after Patent Owner abandoned the contest.

    RulingsAdverse judgment
    • Adverse judgmentAdverse judgmentGranted

      “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 would be construed as a request for adverse judgment even apart from Patent Owner’s explicit request for adverse judgment. Id. § 42.73(b)(4). Under these circumstances, entry of judgment adverse to the Patent Owner and cancellation of claims 1 and 5 of the ʼ163 patent are appropriate. Patent Owner’s request for adverse judgment is granted.” slip op. at 2

    None
    Patents in suitUS 5,870,163
  • 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 · Oct 29, 2015 · IPR2014-00948 · APJ Jon B Tornquist · IPR · Adverse judgment

    The Board granted Patent Owner’s adverse-judgment motion, entered judgment against Patent Owner, and cancelled claims 2, 22, 23, and 25.

    RulingsAdverse judgment
    • Adverse judgmentAdverse judgmentGranted

      “A party may request entry of adverse judgment against itself at any time during a proceeding. 37 C.F.R. § 42.73(b). “Judgment” is defined as “a final written decision by the Board, or a termination of a proceeding.” 37 C.F.R. § 42.2. Although Patent Owner uses the term “termination” in its Motion, it did not submit the Motion under 37 C.F.R. § 42.72 and it did not explain why termination is appropriate in this circumstance. See 37 C.F.R. § 42.72 (noting that the Board may terminate a trial without rendering a final written decision “where appropriate,” such as when the trial is consolidated with another proceeding or pursuant to a settlement under 35 U.S.C. § 317(a)). Under the circumstances presented here, we see no reason not to grant Patent Owner’s Motion. Additionally, for the reasons discussed above, this Decision is a Final Written Decision, not a termination of the proceeding.1” slip op. at 3

    None
    Patents in suitUS 6,370,371
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