- Juniper Networks, Inc. v. Monarch Networking Solutions LLCAdverse judgmentPTAB · 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
NonePatents in suitUS 8,451,845 - ROKU, Inc. v. Universal Electronics Inc.Adverse judgmentPTAB · Dec 28, 2023 · IPR2021-00263 · APJ Russell E Cass · IPR · Adverse judgment
The Board entered adverse judgment against Patent Owner on claims 1–11 because Patent Owner cancelled all challenged claims in a co-pending reexamination.
RulingsAdverse judgment- RehearingRehearing, grantedGranted
“After our Denial Decision, the Director issued an Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (“Interim Fintiv Guidance”)1, directing that “[t]he PTAB will not discretionarily deny petitions based on applying Fintiv to a 1 The Interim Fintiv Guidance is available at https://www.uspto.gov/ sites/default/files/documents/interim_proc_discretionary_denials_ aia_parallel_district_court_litigation_memo_20220621_.pdf. parallel ITC proceeding.” Interim Fintiv Guidance, 7. Following the Federal Circuit’s decision, we conducted a conference call with counsel for the parties and allowed the parties to submit additional briefing to address the status of the case, the status of any related proceedings, the Interim Fintiv Guidance, and any actions that should be taken by the panel at this point concerning this proceeding. Papers 16–18. After considering the parties’ arguments, we granted Petitioner’s Request for Rehearing on February 8, 2023, concluding that, in light of the Interim Fintiv Guidance, exercising discretion to deny institution under 35 U.S.C. § 314(a) was not warranted in this case. Paper 19, 5–12. We also determined that Petitioner had demonstrated a reasonable likelihood of success in proving that the challenged claims were unpatentable, and instituted an inter partes review of claims 1–11 of the ’317 patent with respect to all grounds set forth in the Petition. Id. at 12–37.” slip op. at 2
- Adverse judgmentAdverse judgmentGranted
“(b) Request for adverse judgment. A party may request judgment against itself at any time during a proceeding. Actions construed to be a request for adverse judgment include: . . . (2) Cancellation or disclaimer of a claim such that the party has no remaining claim in the trial. 37 C.F.R. § 42.73(b). In the ’074 Reexam, Patent Owner cancelled all of challenged claims 1–11, and the USPTO has issued a Reexamination Certificate indicating that these claims are cancelled. Ex. 2100, 2; Ex. 1046, 1:15. The Board has previously construed a patent owner’s cancellation in a reexamination of all claims challenged in a pending IPR as a request for adverse judgment under § 42.73(b). See Tarsco Bolted Tank Inc. v. Tank Connection, LLC, IPR2016-01634, Paper 16 at 2 (PTAB Aug. 24, 2017) (“Cancellation of claims 1–11” in an ex parte reexamination “is construed as a request for adverse judgment” in the corresponding IPR proceeding.); Mercedes-Benz USA, LLC v. Signal IP, Inc., IPR2015-00941, Paper 21 at 2–3 (PTAB Apr. 14, 2016) (“Pursuant to 37 C.F.R. § 42.73(b), we construe cancellation of all claims involved in this proceeding” in “a concurrent Reexamination of the” patent at issue “as a request for adverse judgment.”). We agree with the prior decisions in Tarsco and Mercedes-Benz that a patent owner’s cancellation of all challenged claims in an IPR in a co-pending ex parte reexamination is properly construed as a request for adverse judgment under 37 C.F.R. § 42.73(b). Consequently, we construe Patent Owner’s cancellation of all of the claims challenged in this IPR in the ’074 Reexam as a request for adverse judgment.” slip op. at 5
NonePatents in suitUS 10,600,317 - Nike, Inc. v. Valmarc CorporationAdverse judgmentPTAB · Jul 17, 2023 · IPR2022-01404 · APJ Hyun J Jung · IPR · Adverse judgment
The Board entered adverse judgment against Valmarc for claims 1–34; those claims were cancelled after Patent Owner requested judgment.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“A party may request [adverse] judgment against itself at any time during a proceeding.” 37 C.F.R. § 42.73(b). Having reviewed Patent Owner’s request, we determine that entry of judgment against Patent Owner with respect to claims 1–34 of U.S. Patent No. 8,063,736 B2 is appropriate. ORDER Accordingly, it is: ORDERED that judgment is entered under 37 C.F.R. § 42.73(b) against Patent Owner with respect to claims 1–34 of U.S. Patent No. 8,063,736 B2; slip op. at 2
NonePatents in suitUS 8,063,736 - Nike, Inc. v. Valmarc CorporationAdverse judgmentPTAB · Jul 17, 2023 · IPR2022-01403 · APJ Hyun J Jung · IPR · Adverse judgment
The Board entered adverse judgment against Valmarc for claims 1–15; those claims were cancelled after the Patent Owner requested judgment.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“A party may request [adverse] judgment against itself at any time during a proceeding.” 37 C.F.R. § 42.73(b). Having reviewed Patent Owner’s request, we determine that entry of judgment against Patent Owner with respect to claims 1–15 of U.S. Patent No. 7,852,195 B2 is appropriate. ORDER Accordingly, it is: ORDERED that judgment is entered under 37 C.F.R. § 42.73(b) against Patent Owner with respect to claims 1–15 of U.S. Patent No. 7,852,195 B2; FURTHER ORDERED that claims 1–15 of U.S. Patent No. 7,852,195 B2 are cancelled; and FURTHER ORDERED that this Order constitutes a final written decision under 35 U.S.C. § 318(a). slip op. at 2
NonePatents in suitUS 7,852,195 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. et al. v. Black Hills Media, LLCAdverse judgmentPTAB · 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
NonePatents in suitUS 7,917,082 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. et al. v. Black Hills Media, LLCAdverse judgmentPTAB · 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
NonePatents in suitUS 7,835,689 - LG Electronics, Inc. / LG Electronics U.S.A., Inc. et al. v. Cypress Semiconductor Corp.Adverse judgmentPTAB · May 22, 2015 · IPR2014-01342 · APJ Patrick M Boucher · IPR · Adverse judgment
The Board granted Patent Owner’s request for adverse judgment and entered judgment against Patent Owner on claims 1–4 after disclaimer of all claims in the proceeding.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“On May 12, 2015, Patent Owner filed an executed disclaimer of claims 1–4, i.e. all of the claims involved in this proceeding, with a representation that the disclaimer “will be electronically filed with the United States Patent and Trademark Office.” Paper 19. The disclaimer is construed as a request for adverse judgment. 37 C.F.R. § 42.73(b)(2) (“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 request is granted. Accordingly, it is ORDERED that Patent Owner’s request for adverse judgment is granted; and FURTHER ORDERED that judgment is herein entered against Patent Owner with respect to claims 1–4.” slip op. at 1
NonePatents in suitUS 8,004,497 - Redfin Corporation v. Corelogic Solutions, LLCAdverse judgmentPTAB · 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
NonePatents in suitUS 5,361,201 - PTAB · Sep 16, 2014 · IPR2013-00571 · APJ Brian J Mcnamara · IPR · Adverse judgment
The Board granted Patent Owner’s request for adverse judgment, cancelled claims 15, 55, 57, 58, and 60-63, and terminated both joined proceedings.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“A party may request judgment against itself at any time during a proceeding, including by cancelling claims, such that the party has no remaining claim in the trial. 37 C.F.R. § 42.73(b)(2). Patent Owner has cancelled all the claims challenged in these joined proceedings.” slip op. at 2
NonePatents in suitUS 8,135,398 - Uking Universe, Inc. v. Chang-Kang ChuAdverse judgmentPTAB · Jul 12, 2013 · IPR2013-00212 · APJ Brian J Mcnamara · IPR · Adverse judgment
The Board entered adverse judgment and cancelled claims 1-5 of the ’583 Patent after the Patent Owner did not respond to the Order To Show Cause.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentOther
“On June 11, 2013, the Board issued an Order To Show Cause why a judgment under 37 C.F.R. § 42.73(b) cancelling claims 1-5 of the ´583 Patent should not be entered (Order To Show Cause). The Patent Owner was given one month from the date of the Order To Show Cause to file a response.” slip op. at 3
NonePatents in suitUS 8,052,583
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.