- Boe Technology Group Co., Ltd. v. Optronic Sciences LLCAdverse judgmentPTAB · Jan 12, 2026 · IPR2024-01134 · APJ Thu A Dang · IPR · Adverse judgment
The Board denied Patent Owner’s termination request and granted adverse judgment after it disclaimed the entire patent, leaving no claims in the trial.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“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: . . . [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). “The application of the [adverse judgment] rule on its face does not turn on the patentee’s characterization of its own request.” Arthrex, Inc. v. Smith & Nephew, Inc., 880 F.3d 1345, 1349 (Fed. Cir. 2018). In this case, Patent Owner’s disclaimer of the entire term of the ’733 patent leaves no claims remaining in the trial. Although Patent Owner argues that entry of adverse judgment “has negative effects that would discourage Patent Owner from making efforts to streamline the issues” (PO Sur-reply 1–2), we deem such argument not a persuasive reason as to why we should not apply § 42.73(b)(2), or why termination is more appropriate. Therefore, pursuant to 37 C.F.R. § 42.73(b)(2), we construe Patent Owner’s disclaimer as a request for adverse judgment, which we grant.” slip op. at 3
NonePatents in suitUS 9,406,733 - Boe Technology Group Co., Ltd. v. Optronic Sciences LLCAdverse judgmentPTAB · Jan 12, 2026 · IPR2024-01315 · APJ Kevin W Cherry · IPR · Adverse judgment
The Board denied Patent Owner’s termination request and entered adverse judgment after Patent Owner disclaimed all challenged claims, leaving no claims in the trial.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“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: . . . [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). “The application of the [adverse judgment] rule on its face does not turn on the patentee’s characterization of its own request.” Arthrex, Inc. v. Smith & Nephew, Inc., 880 F.3d 1345, 1349 (Fed. Cir. 2018). In this case, Patent Owner’s disclaimer of claims 1 and 3 of the ’477 patent leaves no claims remaining in the trial. Although Patent Owner argues that entry of adverse judgment “has negative effects that would discourage Patent Owner from making efforts to streamline the issues” (PO Sur-reply 1–2), we deem such argument not a persuasive reason as to why we should not apply § 42.73(b)(2), or why termination is more appropriate. Therefore, pursuant to 37 C.F.R. § 42.73(b)(2), we construe Patent Owner’s disclaimer as a request for adverse judgment, which we grant.” slip op. at 3
NonePatents in suitUS 8,158,477 - Apple Inc. v. Corephotonics Ltd.Adverse judgmentPTAB · Feb 11, 2022 · IPR2018-01146 · APJ Monica S Ullagaddi · IPR · Adverse judgment
The Board entered adverse judgment against Patent Owner on claims 6 and 14 after their disclaimer, then terminated the proceeding.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“II. ANALYSIS Actions construed as a request for 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). Here, Patent Owner has disclaimed claims 6 and 14 (along with unchallenged claims 3–5 and 8–11) of the ’712 patent under 35 U.S.C. § 253 according to the procedures set forth in 37 C.F.R. § 1.321(a). Ex. 3002, 1. We agree with Petitioner that 37 C.F.R. § 42.73(b) provides that the Board should construe Patent Owner’s statutory disclaimer to be a request that the Board enter adverse judgment against it with respect to claims 6 and 14, the only claims at issue, in this proceeding. Ex. 3001; see also Unified Patents, LLC v. Arsus, LLC, IPR2020-00948, Paper 18 at 2 (PTAB Jan. 27, 2021) (construing statutory disclaimer of all challenged claims as request for adverse judgment), aff’d, Case No. 2021- 1648, 2021 WL 5315423 (Fed. Cir. Nov. 16, 2021). Having reviewed the Disclaimer (Ex. 3002), we determine that entry of adverse judgment against Patent Owner with respect to claims 6 and 14 of the ’712 patent is appropriate. Claims 1, 2, 7, 12, 13, 15–17, and 19 are no longer part of this IPR proceeding because we made a final judgment with regard to these claims and that judgment has not been reversed or vacated. See 37 C.F.R. § 42.2 (“A decision is final only if it disposes of all necessary issues with regard to the party seeking judicial review, and does not indicate that further action is required.” (emphasis added)). As such, these claims are not “in the trial” within the meaning of 37 C.F.R. § 42.73(b)(2). The Federal Circuit remanded the Decision as to only claims 6 and 14. As such, our determination of adverse judgment does not apply to claims 1, 2, 7, 12, 13, 15–17, and 19. Patent Owner’s Disclaimer of claims 6 and 14 means that Patent Owner has no claims remaining in the present proceeding.” slip op. at 3
NonePatents in suitUS 9,568,712 - Tarsco Bolted Tank Inc. v. Tank Connection, LLCAdverse judgmentPTAB · Aug 25, 2017 · IPR2016-01634 · APJ Meredith C Petravick · IPR · Adverse judgment
The Board entered adverse judgment against Patent Owner on claims 1–11 after their cancellation and Patent Owner’s abandonment of the contest.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“Actions construed to be a request for 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). Ex Parte Reexamination Certificate No. 9,187,921 C1, canceling claims 1–11 of the ’921 patent, issued on July 24, 2017. Ex. 3001; see Paper 14 (memorializing a conference call during which Patent Owner indicated that it was allowing the claims to be canceled in the reexamination intentionally). Claims 1–11 are all of the claims of the ’921 patent and all claims at issue in this inter partes review. Cancellation of claims 1–11 is construed as a request for adverse judgment. Additionally, “[a]ctions construed to be a request for adverse judgment include: . . . [a]bandonment of the contest.” 37 C.F.R. § 42.73(b)(4). Patent Owner did not file a Patent Owner’s Response or a Motion to Amend in this inter partes review by the May 17, 2017 deadline, set in the Scheduling Order (Paper 13), and did not file a paper in response to the Order to Show Cause by the August 22, 2017 deadline. Patent Owner’s lack of response is consistent with abandonment of the contest. Abandonment of the contest is construed as a request for adverse judgement. slip op. at 2
NonePatents in suitUS 9,187,921 - Volkswagen Group Of America, Inc. v. West View Research, LLCAdverse judgmentPTAB · 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
NonePatents 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
NonePatents in suitUS 5,870,163 - Nikon Corporation v. ASML Netherlands B.V.Adverse judgmentPTAB · May 28, 2015 · IPR2015-00003 · APJ David C Mckone · IPR · Adverse judgment
The Board granted Patent Owner’s request to cancel claims 1–19, 25–28, 31, and 34 and entered adverse judgment against Patent Owner.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“Under 37 C.F.R. § 42.73(b), a party may request judgment against itself at any time during a proceeding. Furthermore, under § 42.73(b)(2), actions construed as a request for entry of adverse judgment include cancellation of claims such that the party has no remaining claim in the trial. Patent Owner has not only requested cancellation of all claims involved in this inter partes review, such that after the cancellation it will have no remaining claim in the trial, but also expressly acknowledged that its request is construed as a request for entry of adverse judgment. Patent Owner’s request to cancel claims 1–19, 25–28, 31, and 34 of the ’137 patent is granted.” slip op. at 2
NonePatents in suitUS 8,233,137 - Nikon Corporation v. ASML Netherlands B.V.Adverse judgmentPTAB · May 28, 2015 · IPR2015-00002 · APJ David C Mckone · IPR · Adverse judgment
The Board granted the Patent Owner’s request to cancel claims 1–7 and 9–13, entered adverse judgment against the Patent Owner, and terminated the inter partes review.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“Under 37 C.F.R. § 42.73(b), a party may request judgment against itself at any time during a proceeding. Furthermore, under § 42.73(b)(2), actions construed as a request for entry of adverse judgment include cancellation of claims such that the party has no remaining claim in the trial. Patent Owner has not only requested cancellation of all claims involved in this inter partes review, such that after the cancellation it will have no remaining claim in the trial, but also expressly acknowledged that its request is construed as a request for entry of adverse judgment. Patent Owner’s request to cancel claims 1–7 and 9–13 of the ’931 patent is granted.” slip op. at 2
NonePatents in suitUS 7,528,931 - 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 - Google, Inc v. Inventor Holdings, LLCAdverse judgmentPTAB · Sep 12, 2014 · CBM2014-00003 · APJ Miriam L Quinn · CBM · Adverse judgment
The Board granted Patent Owner’s request for adverse judgment and entered judgment of unpatentability against claims 1-4, 9-11, 19, 24, 27, 28, 31, 32, and 65 based on Patent Owner’s concession.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“in this proceeding under 37 C.F.R. § 42.73(b). Paper 33, “Req.”. Under section 42.73(b)(3), concession of unpatentability of the contested subject matter is construed as an adverse judgment. In its Request, Patent Owner concedes the unpatentability of and requests adverse judgment regarding claims 14, 911, 19, 24, 27, 28, 31, 32, and 65 of U.S. Patent No. 5,844,272. Req. 2. The conceded unpatentability addresses all the claims subject to this proceeding. Therefore, no other patent claims remain for trial in this covered business method review. Accordingly, it is hereby ORDERED that Patent Owner’s Request for Adverse Judgment under 37 C.F.R. § 42.73(b)(3) is hereby granted; and FURTHER ORDERED that a judgment of unpatentability is entered against claims 14, 911, 19, 24, 27, 28, 31, 32, and 65 of the U.S. Patent No. 5,884,272.” slip op. at 2
NonePatents in suitUS 5,884,272
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.