- Microsoft Corporation v. Proxense, LLCAdverse judgmentPTAB · 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
NonePatents in suitUS 8,352,730 - Apple Inc. v. Proxense, LLCAdverse judgmentPTAB · 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
NonePatents in suitUS 8,352,730 - Apple Inc. v. Proxense, LLCAdverse judgmentPTAB · 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
NonePatents in suitUS 8,352,730 - Microsoft Corporation v. Proxsense LLCAdverse judgmentPTAB · 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
NonePatents in suitUS 9,298,905 - Microsoft Corporation v. Proxsense LLCAdverse judgmentPTAB · 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
NonePatents in suitUS 9,298,905 - Google LLC / Apple Inc. v. Proxsense LLCAdverse judgmentPTAB · 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
NonePatents in suitUS 9,298,905 - Google LLC / Apple Inc. v. Proxsense LLCAdverse judgmentPTAB · 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
NonePatents in suitUS 9,298,905 - 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 - 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 - 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
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.