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  • PTAB · Apr 1, 2025 · IPR2024-00565 · APJ Brian J Mcnamara · IPR · Adverse judgment

    The Board granted Patent Owner’s unopposed motion for adverse judgment after claims 1 and 5-8 were cancelled in reexamination, and terminated the IPR.

    RulingsAdverse judgment
    • Adverse judgmentAdverse judgmentGranted

      “When all claims at issue in an IPR are cancelled in a concurrent reexamination, the Board “construe[s] [the] cancellation of all claims . . . as a request for adverse judgment.” Mercedes-Benz USA, LLC v. Signal IP, Inc., IPR2015-00941, Paper 21 at 2-3 (PTAB Apr. 14, 2016). ORDER In consideration of the foregoing, it is hereby: ORDERED that Patent Owner’s Motion for Adverse Judgment is GRANTED; FURTHER ORDERED that Adverse Judgment is entered; and FURTHER ORDERED that this inter partes review is terminated.” slip op. at 2

    None
    Patents in suitUS 8,451,845
  • PTAB · Jan 2, 2024 · IPR2023-00856 · APJ John R Kenny · IPR · Adverse judgment

    The Board entered adverse judgment against Patent Owner on claims 1–20 after it requested to abandon the contest, and terminated the three related IPR proceedings.

    RulingsAdverse judgment
    • Adverse judgmentAdverse judgmentGranted

      “A party may request judgment against itself at any time during a proceeding.” 37 C.F.R. § 42.73(b). Thus, we grant Patent Owner’s Request. ORDER Accordingly, it is ORDERED that judgment is entered under 37 C.F.R. § 42.73(b)(4) against Patent Owner with respect to claims 1–20 of U.S. Patent No. 11,026,232 B2; and slip op. at 2

    None
    Patents in suitUS 11,026,232
  • PTAB · Jan 2, 2024 · IPR2023-00844 · APJ John R Kenny · IPR · Adverse judgment

    The Board entered adverse judgment against Dali Wireless on claims 1–20 after it requested to abandon the contest, and terminated the three related IPR proceedings.

    RulingsAdverse judgment
    • Adverse judgmentAdverse judgmentGranted

      “A party may request judgment against itself at any time during a proceeding.” 37 C.F.R. § 42.73(b). Thus, we grant Patent Owner’s Request. slip op. at 2

    None
    Patents in suitUS 11,026,232
  • PTAB · Jan 2, 2024 · IPR2022-01242 · APJ John R Kenny · IPR · Adverse judgment

    The Board entered adverse judgment against Patent Owner on claims 1–20 after it requested to abandon the contest, and terminated the related IPR proceedings.

    RulingsAdverse judgment
    • Adverse judgmentAdverse judgmentGranted

      “A party may request judgment against itself at any time during a proceeding.” 37 C.F.R. § 42.73(b). Thus, we grant Patent Owner’s Request. ORDER Accordingly, it is ORDERED that judgment is entered under 37 C.F.R. § 42.73(b)(4) against Patent Owner with respect to claims 1–20 of U.S. Patent No. 11,026,232 B2; and slip op. at 2

    None
    Patents in suitUS 11,026,232
  • PTAB · Jan 19, 2022 · IPR2021-00416 · APJ Steven M Amundson · IPR · Adverse judgment

    The Board entered adverse judgment against Patent Owner after it requested judgment following cancellation of claims 1–20 in a reissue application, and terminated the proceeding.

    RulingsAdverse judgment
    • Adverse judgmentAdverse judgmentGranted

      “The Board’s rules provide that “[a] party may request judgment against itself at any time during a proceeding.” 37 C.F.R. § 42.73(b)(2). Because Patent Owner requests adverse judgment and Petitioner does not oppose, the entry of judgment adverse to Patent Owner is appropriate.” slip op. at 2

    None
    Patents in suitUS 10,079,737
  • 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 · Nov 25, 2015 · CBM2014-00155 · APJ Karl D Easthom · CBM · Adverse judgment

    The Board entered adverse judgment against Patent Owner on claims 1–16 after Patent Owner disclaimed all claims in the trial.

    RulingsAdverse judgment
    • Adverse judgmentAdverse judgmentGranted

      “proceeding. 37 C.F.R. § 42.73(b). 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). Here, Patent Owner has disclaimed, under 37 C.F.R. § 1.321, claims 1–16, all claims involved in this trial. Paper 28. The statutory disclaimer constitutes a request for entry of adverse judgment.1 III. CONCLUSION Entry of judgment against Patent Owner with respect to claims 1–16 of the ’245 patent is appropriate.” slip op. at 2

    • PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Denied

      “1 During a telephone conference on November 17, 2015, which included counsel for both parties and the panel, counsel for Petitioner stated he did not object to the request for adverse judgment, but requested that the panel issue with this judgment findings of fact and legal determinations arising from papers of record. Petitioner expressed a concern over a potential for duplicated efforts in ongoing reissue proceedings involving the ’245 patent. We exercise our discretion and decline the request to supplement the record. See 37 C.F.R. § 42.73(d) (3) (i) (precluding Patent Owner from obtaining claims that are not “patentably distinct from a finally refused or canceled claim”).” slip op. at 3

    None
    Patents in suitUS 8,489,245
  • PTAB · Jun 8, 2015 · IPR2014-00721 · APJ Tina E Hulse · IPR · Adverse judgment

    Patent Owner’s motion to cancel claims 1 and 11 was granted and treated as a request for adverse judgment; judgment was entered against Patent Owner on those claims.

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

      “Pursuant to 37 C.F.R. § 42.73(b), a party may request judgment against itself at any time during a proceeding. We construe the cancellation of claims such that the patent owner has no remaining claim in the trial to be 1 Hatlelid et al., US 6,772,195 B1, issued Aug. 3, 2004 (Ex. 1003). 2 Dwek, US 6,248,946 B1, issued June 19, 2001 (Ex. 1004). 3 Traversat et al., US 7,065,579 B2, issued June 20, 2006 (Ex. 1005). 4 Gong et al., Multicast Security and Its Extension to a Mobile Environment, 1 WIRELESS NETWORKS 281–95 (1995) (Ex. 1006). 5 We note that Patent Owner did not request a conference call with the Board before filing its Motion to Amend, as required by 37 C.F.R. § 42.121(a). Under the circumstances of this case, we exercise our discretion and determine that it is appropriate to waive the requirements of this rule. See 37 C.F.R. § 42.5(b). a request for adverse judgment. See 37 C.F.R. § 42.73(b)(2). Here, Patent Owner requests cancellation of all claims of the ’082 patent on which a trial was instituted, such that Patent Owner would have no remaining claim in the trial. Thus, it is appropriate to enter judgment at this time.” slip op. at 3

    • Adverse judgmentAdverse judgmentOther

      “against itself at any time during a proceeding. We construe the cancellation of claims such that the patent owner has no remaining claim in the trial to be 1 Hatlelid et al., US 6,772,195 B1, issued Aug. 3, 2004 (Ex. 1003). 2 Dwek, US 6,248,946 B1, issued June 19, 2001 (Ex. 1004). 3 Traversat et al., US 7,065,579 B2, issued June 20, 2006 (Ex. 1005). 4 Gong et al., Multicast Security and Its Extension to a Mobile Environment, 1 WIRELESS NETWORKS 281–95 (1995) (Ex. 1006). 5 We note that Patent Owner did not request a conference call with the Board before filing its Motion to Amend, as required by 37 C.F.R. § 42.121(a). Under the circumstances of this case, we exercise our discretion and determine that it is appropriate to waive the requirements of this rule. See 37 C.F.R. § 42.5(b). a request for adverse judgment. See 37 C.F.R. § 42.73(b)(2). Here, Patent Owner requests cancellation of all claims of the ’082 patent on which a trial was instituted, such that Patent Owner would have no remaining claim in the trial. Thus, it is appropriate to enter judgment at this time.” slip op. at 3

    None
    Patents in suitUS 7,917,082
  • PTAB · Jun 8, 2015 · IPR2014-00718 · APJ Tina E Hulse · IPR · Adverse judgment

    Patent Owner canceled claims 9 and 10 by motion; the Board treated it as a request for adverse judgment and entered judgment against Patent Owner.

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

      “II. MOTION TO AMEND In its Motion to Amend, Patent Owner seeks to cancel both claims 9 and 10, which are the only claims subject to this proceeding.7 Paper 20, 1. Petitioner did not file an opposition to Patent Owner’s Motion to Amend. Accordingly, Patent Owner’s Motion to Amend canceling claims 9 and 10 of the ’689 patent is granted.” slip op. at 3

    • Adverse judgmentAdverse judgmentOther

      “Pursuant to 37 C.F.R. § 42.73(b), a party may request judgment against itself at any time during a proceeding. We construe the cancellation of claims such that the patent owner has no remaining claim in the trial to be a request for adverse judgment. See 37 C.F.R. § 42.73(b)(2). Here, Patent Owner requests cancellation of all claims of the ’689 patent on which a trial was instituted, such that Patent Owner would have no remaining claim in the trial. Thus, it is appropriate to enter judgment at this time.” slip op. at 4

    None
    Patents in suitUS 7,835,689
  • PTAB · Mar 16, 2015 · CBM2014-00027 · APJ Brian J Mcnamara · CBM · Adverse judgment

    The Board granted Patent Owner’s motion for adverse judgment after disclaimer and ordered claims 2–4, 7–8, and 11–20 cancelled.

    RulingsAdverse judgment
    • Adverse judgmentAdverse judgmentGranted

      “concerning the status of this case. On March 12, 2015, we authorized Patent Owner to file a Motion for Adverse Judgment. On March 12, 2015, Patent Owner filed its Motion for Adverse Judgment, in which Patent Owner disclaimed claims 2–4, 7, 8, and 11–20. Paper 18. Having disclaimed all the claims involved in this proceeding, Patent Owner’s Motion for Adverse Judgment is GRANTED and claims 2–4, 7, 8, and 11–20 will be cancelled. ORDER In consideration of the above, it is ORDERED that Patent Owner’s Motion for Adverse Judgment is GRANTED; and FURTHER ORDERED, that claims 2–4, 7, 8 and 11–20 of U.S. Patent No. 5,361,201 shall be cancelled.” slip op. at 2

    None
    Patents in suitUS 5,361,201
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