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  • PTAB · Apr 28, 2025 · IPR2024-00775 · APJ David C Mckone · IPR · Adverse judgment

    The Board entered adverse judgment against Patent Owner and cancelled claims 1–17 after Patent Owner conceded unpatentability.

    RulingsAdverse judgment
    • Adverse judgmentAdverse judgmentGranted

      “Rule 47.73(b)(3) provides that “[a] party may request adverse judgment against itself at any time during a proceeding” and that “[a]ctions construed to be a request for adverse judgment include . . . [c]oncession of unpatentability . . . of the contested subject matter.” 37 C.F.R. § 42.73(b)(3). We grant Patent Owner’s request for adverse judgment.” slip op. at 2

    None
    Patents in suitUS 8,352,730
  • PTAB · Apr 28, 2025 · IPR2024-01333 · APJ David C Mckone · IPR · Adverse judgment

    The Board entered adverse judgment against Patent Owner and cancelled claims 1–6 and 8–17 after Patent Owner conceded their unpatentability.

    RulingsAdverse judgment
    • Adverse judgmentAdverse judgmentGranted

      “IPR2024-01333 based on the concessions of unpatentability made when Patent Owner authorized entry of the Examiner’s amendment in EPR 90/015,052.” Paper 29, 1. “Patent Owner has conceded the unpatentability of the claims at issue in this proceeding by authorizing entry of the Examiner’s amendment in EPR 90/015,052. As such, Patent Owner requests adverse judgment pursuant to 42.73(b)(3).” Id. “Petitioner Apple agrees to Patent Owner’s request for adverse judgment in IPR2024-00232.” Ex. 3004. Rule 47.73(b)(3) provides that “[a] party may request adverse judgment against itself at any time during a proceeding” and that “[a]ctions construed to be a request for adverse judgment include . . . [c]oncession of unpatentability . . . of the contested subject matter.” 37 C.F.R. § 42.73(b)(3). We grant Patent Owner’s request for adverse judgment.” slip op. at 2

    • PTAB / AIA Trials › §315(e) estoppelOther

      “Reexamination Control No. 90/015,052 (Paper 27). Paper 29, 1–3. “Patent Owner is also agreeing to follow the estoppel provisions of 42.73(d)(3).” Id. at 3. Petitioner “does not oppose Patent Owner’s request to lift the stay in EPR 90/015,052,” but requests that we “include in [our] judgment a recommendation to the Examiner in EPR 90/015,052 to consider whether the Patent Owner should be estopped under 37 C.F.R. 42.73(d)(3)(i) from ‘taking action inconsistent with the adverse judgment, including obtaining in or canceled claim.” Ex. 3004. We hereby lift the stay in Reexamination Control No. 90/015,052. We also recommend that the Reexamination Examiner consider whether estoppel under 37 C.F.R. § 42.73(d)(3)(i) should preclude Patent Owner from taking action inconsistent with this adverse judgment.” slip op. at 2

    None
    Patents in suitUS 8,352,730
  • PTAB · Apr 28, 2025 · IPR2024-00232 · APJ David C Mckone · IPR · Adverse judgment

    The Board entered adverse judgment against Patent Owner, cancelled claims 1–6 and 8–17, and lifted the stay of the concurrent reexamination after Patent Owner conceded unpatentability.

    RulingsAdverse judgment
    • Adverse judgmentAdverse judgmentGranted

      “IPR2024-01333 based on the concessions of unpatentability made when Patent Owner authorized entry of the Examiner’s amendment in EPR 90/015,052.” Paper 29, 1. “Patent Owner has conceded the unpatentability of the claims at issue in this proceeding by authorizing entry of the Examiner’s amendment in EPR 90/015,052. As such, Patent Owner requests adverse judgment pursuant to 42.73(b)(3).” Id. “Petitioner Apple agrees to Patent Owner’s request for adverse judgment in IPR2024-00232.” Ex. 3004. Rule 47.73(b)(3) provides that “[a] party may request adverse judgment against itself at any time during a proceeding” and that “[a]ctions construed to be a request for adverse judgment include . . . [c]oncession of unpatentability . . . of the contested subject matter.” 37 C.F.R. § 42.73(b)(3). We grant Patent Owner’s request for adverse judgment.” slip op. at 2

    • PTAB / AIA Trials › §315(e) estoppelOther

      “Reexamination Control No. 90/015,052 (Paper 27). Paper 29, 1–3. “Patent Owner is also agreeing to follow the estoppel provisions of 42.73(d)(3).” Id. at 3. Petitioner “does not oppose Patent Owner’s request to lift the stay in EPR 90/015,052,” but requests that we “include in [our] judgment a recommendation to the Examiner in EPR 90/015,052 to consider whether the Patent Owner should be estopped under 37 C.F.R. 42.73(d)(3)(i) from ‘taking action inconsistent with the adverse judgment, including obtaining in or canceled claim.” Ex. 3004. We hereby lift the stay in Reexamination Control No. 90/015,052. We also recommend that the Reexamination Examiner consider whether estoppel under 37 C.F.R. § 42.73(d)(3)(i) should preclude Patent Owner from taking action inconsistent with this adverse judgment.” slip op. at 2

    None
    Patents in suitUS 8,352,730
  • PTAB · Nov 12, 2024 · IPR2024-01328 · APJ Kevin F Turner · IPR · Adverse judgment

    The Board granted Patent Owner’s request for adverse judgment after it disclaimed all challenged claims in IPR2024-01328.

    RulingsAdverse judgment
    • Adverse judgmentAdverse judgmentGranted

      “A party may request adverse judgment against itself at any time. 37 C.F.R. § 42.73(b). Here, Patent Owner requests adverse judgment in each proceeding because no claims remain in the trial after Patent Owner’s disclaimer of all the claims at issue in this proceedings. See 37 C.F.R. § 42.73(b)(2). We grant Patent Owner’s requests and enter judgment against Patent Owner under 37 C.F.R. § 42.73(b) in both proceedings.” slip op. at 2

    None
    Patents in suitUS 9,298,905
  • PTAB · Nov 12, 2024 · IPR2024-00776 · APJ Kevin F Turner · IPR · Adverse judgment

    The Board granted Patent Owner’s request for adverse judgment after it disclaimed claims 1, 3-7, 9, 10, and 12-18.

    RulingsAdverse judgment
    • Adverse judgmentAdverse judgmentGranted

      “A party may request adverse judgment against itself at any time. 37 C.F.R. § 42.73(b). Here, Patent Owner requests adverse judgment in each proceeding because no claims remain in the trial after Patent Owner’s disclaimer of all the claims at issue in this proceedings. See 37 C.F.R. § 42.73(b)(2). We grant Patent Owner’s requests and enter judgment against Patent Owner under 37 C.F.R. § 42.73(b) in both proceedings.” slip op. at 2

    None
    Patents in suitUS 9,298,905
  • PTAB · Nov 1, 2024 · IPR2024-01335 · APJ Kevin F Turner · IPR · Adverse judgment

    The Board granted Patent Owner’s request for adverse judgment after disclaimer of claims 1–7 and 9–18 of the ’905 patent.

    RulingsAdverse judgment
    • Adverse judgmentAdverse judgmentGranted

      “A party may request adverse judgment against itself at any time. 37 C.F.R. § 42.73(b). Here, Patent Owner requests adverse judgment because no claims remain in the trial after Patent Owner’s disclaimer of all the claims at issue in this proceedings. See 37 C.F.R. § 42.73(b)(2). We grant Patent Owner’s request and enter judgment against Patent Owner under 37 C.F.R. § 42.73(b) in this proceeding. ORDER Accordingly, it is: ORDERED that Patent Owner’s request for adverse judgment is granted, and judgment is entered against Patent Owner under 37 C.F.R. § 42.73(b) with respect to claims 1–7 and 9–18 of U.S. Patent No. 9,298,905 B1.” slip op. at 2

    None
    Patents in suitUS 9,298,905
  • PTAB · Nov 1, 2024 · IPR2024-00234 · APJ Kevin F Turner · IPR · Adverse judgment

    The Board granted Patent Owner’s request for adverse judgment after disclaimer of claims 1–7 and 9–18.

    RulingsAdverse judgment
    • Adverse judgmentAdverse judgmentGranted

      “A party may request adverse judgment against itself at any time. 37 C.F.R. § 42.73(b). Here, Patent Owner requests adverse judgment because no claims remain in the trial after Patent Owner’s disclaimer of all the claims at issue in this proceedings. See 37 C.F.R. § 42.73(b)(2). We grant Patent Owner’s request and enter judgment against Patent Owner under 37 C.F.R. § 42.73(b) in this proceeding.” slip op. at 2

    None
    Patents in suitUS 9,298,905
  • PTAB · 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

    None
    Patents in suitUS 7,333,798
  • PTAB · Nov 19, 2015 · IPR2015-00713 · APJ Jon B Tornquist · IPR · Adverse judgment

    The Board granted Patent Owner’s request for adverse judgment and cancelled claims 1, 2, 8, 9, 23, 24, 30, and 31.

    RulingsAdverse judgment
    • Adverse judgmentAdverse judgmentGranted

      “proceeding. 37 C.F.R. § 42.73(b). Actions construed to be a request for adverse judgment include disclaimer of the involved application or patent and cancellation or disclaimer of a claim such that the party has no remaining claim in the trial. Id. In light of Patent Owner’s disclaimer of claims 1–44 of the ’077 patent, we determine that entry of judgment against Patent Owner with respect to claims 1, 2, 8, 9, 23, 24, 30, and 31 of the ’077 patent is appropriate.” slip op. at 2

    None
    Patents in suitUS 7,035,077
  • 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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