- Lumi Legend Corporation v. Manehu Product Alliance, LLCAdverse judgmentPTAB · Feb 28, 2025 · PGR2024-00014 · APJ Barry L Grossman · PGR · Adverse judgment
The Board granted Patent Owner’s request for adverse judgment against itself and held claims 33–36 unpatentable.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“October 25, 2024, from counsel for Patent Owner, Patent Owner requested authorization to file “a request for adverse judgment against itself under 37 C.F.R. § 42.73(b).” Ex. 3003 (emphases added). Our Rule 42.73(b) states “A party may request judgment against itself at any time during a proceeding.” The Board granted Patent Owner’s request. Ex. 3003. Patent Owner then filed its “Request for Adverse Judgment Pursuant to 37 C.F.R. § 42.73(b).” Paper 11 (Request for Adverse Judgment). This Request, however, stated, in error, that Patent Owner requested “adverse judgment against Petitioner on claims 33-36, pursuant to 37 C.F.R. § 42.73(b)(4).” Id. (emphases added). Our Rule 42.73(b)(4) concerns “[a]ctions construed to be a request for adverse judgment.” 37 C.F.R. § 42.73(b)(4) (emphasis added). Subsection (b)(4) states one of the actions construed to be a request for adverse judgment is “[a]bandonment of the contest.” Id. The actions construed to be a request for adverse judgment, however, are never reached when a party states unequivocally that it requests “judgment against itself.” that the Request for Adverse Judgement is seeking adverse judgment against itself, not Petitioner. Id. As stated in the title of Patent Owner’s Request for Adverse Judgment, we consider this request under our Rule 42.73(b). As corrected, the Request seeks a “final adverse judgment against [Patent Owner] on claims 33-36,” which are all the challenged claims. Thus, claims 33–36 are held to be unpatentable. 1” slip op. at 2
NonePatents in suitUS 11,781,703 - Apple Inc. v. Ald Social, LLCAdverse judgmentPTAB · Jul 23, 2024 · IPR2023-01399 · APJ Barbara A Benoit · IPR · Adverse judgment
The Board entered adverse judgment against ALD Social, LLC on claims 1–16 of the ’158 patent and terminated IPR2023-01399 after finding Patent Owner unequivocally abandoned the contest.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“judgment against itself at any time during a proceeding, and abandonment of the contest is construed by the Board to be a request for adverse judgment. See IPR2023-01398, Paper 8, 3 (citing 37 C.F.R. § 42.73(b)); IPR2023-01399, Paper 7, 3 (citing 37 C.F.R. § 42.73(b)). Our orders also stated: Under the specific circumstances of this case, we determine Patent Owner’s failure to file long-overdue mandatory notices required by 37 C.F.R. § 42.8(a)(2) to demonstrate Patent Owner’s abandonment of the contest. Under 37 C.F.R. § 42.5(c), in the particular circumstances of this case, and in the interests of justice, we set a deadline for Patent Owner to file mandatory notices pursuant to 37 C.F.R. § 42.8(a)(2) no later than June 10, 2024. IPR2023-01398, Paper 8, 4 (emphasis in original); IPR2023-01399, Paper 7, 4 (emphasis in original). Our orders further explained that we “would view, in the particular circumstances of this case, Patent Owner’s filing of mandatory notices by the deadline as an indication that Patent Owner had not abandoned the contest.” IPR2023-01398, Paper 8, 4; IPR2023-01399, Paper 7, 4.” slip op. at 5
NonePatents in suitUS 9,402,158 - Apple Inc. v. Ald Social, LLCAdverse judgmentPTAB · Jul 23, 2024 · IPR2023-01398 · APJ Barbara A Benoit · IPR · Adverse judgment
The Board entered adverse judgment against ALD Social, LLC on claims 1–14 of the ’054 patent and terminated IPR2023-01398 after finding unequivocal abandonment.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“judgment against itself at any time during a proceeding, and abandonment of the contest is construed by the Board to be a request for adverse judgment. See IPR2023-01398, Paper 8, 3 (citing 37 C.F.R. § 42.73(b)); IPR2023-01399, Paper 7, 3 (citing 37 C.F.R. § 42.73(b)). Our orders also stated: Under the specific circumstances of this case, we determine Patent Owner’s failure to file long-overdue mandatory notices required by 37 C.F.R. § 42.8(a)(2) to demonstrate Patent Owner’s abandonment of the contest. Under 37 C.F.R. § 42.5(c), in the particular circumstances of this case, and in the interests of justice, we set a deadline for Patent Owner to file mandatory notices pursuant to 37 C.F.R. § 42.8(a)(2) no later than June 10, 2024. IPR2023-01398, Paper 8, 4 (emphasis in original); IPR2023-01399, Paper 7, 4 (emphasis in original). Our orders further explained that we “would view, in the particular circumstances of this case, Patent Owner’s filing of mandatory notices by the deadline as an indication that Patent Owner had not abandoned the contest.” IPR2023-01398, Paper 8, 4; IPR2023-01399, Paper 7, 4.” slip op. at 5
NonePatents in suitUS 9,198,054 - 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 - Nichia Corporation v. Document Security Systems, Inc.Adverse judgmentPTAB · Nov 18, 2022 · IPR2018-01165 · APJ Barbara A Benoit · IPR · Adverse judgment
The Board granted adverse judgment against Patent Owner as to claims 16–19 after their statutory disclaimer and terminated the proceeding.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“Moreover, under 37 § C.F.R. 42.73(b), a “party may request judgment against itself at any time during a proceeding. Actions construed to be a request for adverse judgment include . . . disclaimer of a claim such that the party has no remaining claim in the trial.” The only claims before us on remand have been disclaimed. Accordingly, we construe Patent Owner’s disclaimer to be a request for adverse judgment as to those claims which remain before us, which we now grant.” slip op. at 3
- RemandOther
“Written Decision to the United States Court of Appeals for the Federal Circuit. Papers 31, 32. The court issued its decision affirming our findings as to all claims except claims 15–19. Nichia Corp. v. Document Sec. Sys., Inc., Nos. 2020-2261, 2020-2287, 2022 WL 1218036, at *1 (Fed. Cir. Apr. 26, 2022). Specifically, the court reversed our determination that Petitioner had not shown independent claim 15 to be unpatentable and remanded for further proceedings regarding dependent claims 16–19. Id. On June 14, 2022, the court issued the formal mandate. Paper 33. On June 23, 2022, Patent Owner statutorily disclaimed claims 16–19 of the ’087 patent. Thus, claims 16–19 are no longer part of this proceeding and no issues remain for us to consider on remand. See Sanofi-Aventis U.S., LLC v. Dr. Reddy’s Labs., Inc., 933 F.3d 1367, 1373 (Fed. Cir. 2019) (noting that disclaiming claims effectively eliminates those claims from the patent as though the disclaimed claims had never existed (internal quotations and citations omitted)); see also Asetek Danmark A/S v. CoolIT Sys., Inc., IPR2020-00747, Paper 42 at 6 (PTAB Sept. 30, 2021) (determining that a proceeding); cf. 37 C.F.R. § 42.107(e) (“No inter partes review will be instituted based on disclaimed claims.”).” slip op. at 2
NonePatents in suitUS 7,524,087 - PTAB · Mar 4, 2022 · IPR2020-01640 · APJ Jason W Melvin · IPR · Adverse judgment
The Board granted Patent Owner’s request for adverse judgment and terminated review of challenged claims 2 and 3 after Patent Owner disclaimed them.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“Owner indicates that it disclaimed all interest in the challenged claims. Response 1 (citing Ex. 2002 (Disclaimer under 37 C.F.R. § 1.321(a) of claims 2 and 3)). Patent Owner requests adverse judgment. Id.; see 37 C.F.R. § 42.73(b). Because Patent Owner satisfies the regulatory standard, we grant Patent Owner’s request. Accordingly, it is ORDERED that, pursuant to 37 C.F.R. § 42.73(b), inter partes review of claims 2 and 3 of the ’156 patent is terminated.2” slip op. at 2
NonePatents in suitUS 7,389,156 - 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 - Securus Technologies, Inc. v. Global Tel*link CorporationAdverse judgmentPTAB · Jan 10, 2017 · IPR2016-01446 · APJ Georgianna W Braden · IPR · Adverse judgment
The Board entered adverse judgment against Patent Owner on claims 1–5 because those claims were statutorily disclaimed.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentOther
“Under 37 C.F.R. § 42.73(b), a party may request an adverse judgment at any time during a proceeding. Disclaimer of claims, such that a party has no remaining claim in the proceeding, is deemed a request for entry of adverse judgment. 37 C.F.R. § 42.73 (b)(1) & (2). Accordingly, we construe Patent Owner’s statutory disclaimer of all of the challenged claims in the ’798 patent as a request for adverse judgment.” slip op. at 2
NonePatents in suitUS 7,333,798 - Globus Medical, Inc. v. Flexuspine, Inc.Adverse judgmentPTAB · Jun 3, 2016 · IPR2015-01795 · APJ William V Saindon · IPR · Adverse judgment
The Board granted Patent Owner’s request for adverse judgment and ordered cancellation of claims 1–4 of the ’386 patent.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“II. DISCUSSION A party may request entry of adverse judgment against itself at any time during a proceeding. 37 C.F.R. § 42.73(b). 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. Here, Patent Owner has requested cancellation of all the claims identified for trial and expressly requested entry of adverse judgment. Paper 14. Patent Owner’s requests for cancellation of claims 1–4 of the ’386 patent and for entry of adverse judgment are granted.” slip op. at 2
NonePatents in suitUS 8,647,386 - Globus Medical, Inc. v. Flexuspine, Inc.Adverse judgmentPTAB · Jun 3, 2016 · IPR2015-01749 · APJ William V Saindon · IPR · Adverse judgment
The Board granted Patent Owner’s request for adverse judgment and ordered claim 5 canceled after institution of trial.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“II. DISCUSSION A party may request entry of adverse judgment against itself at any time during a proceeding. 37 C.F.R. § 42.73(b). 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. Here, Patent Owner has requested cancellation of all the claims identified for trial and expressly requested entry of adverse judgment. Paper 14. Patent Owner’s requests for cancellation of claim 5 of the ’853 patent and for entry of adverse judgment are granted.” slip op. at 2
NonePatents in suitUS 7,204,853
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.