- Luxottica Of America Inc. v. E-Vision Smart Optics, Inc.Adverse judgmentPTAB · Mar 31, 2026 · IPR2025-00216 · APJ John D Hamann · IPR · Adverse judgment
The Board granted the Patent Owner’s request for adverse judgment after disclaimer of claims 1–20.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“Our Rules provide that “[a] party may request judgment against itself at any time during a proceeding,” and that “[a]ctions 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). Such is the case here. Thus, we grant Patent Owner’s unopposed Request for Adverse Judgment.” slip op. at 2
NonePatents in suitUS 11,487,138 - Netflix, Inc.Adverse judgmentPTAB · Mar 18, 2024 · IPR2022-01568 · APJ Barbara A Parvis · IPR · Adverse judgment
The Board denied Netflix’s requests for adverse judgment and to expunge Patent Owner’s papers, then dismissed and terminated the proceeding without a final written decision.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentDenied
“(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: (1) Disclaimer of the involved application or patent; (2) Cancellation or disclaimer of a claim such that the party has no remaining claim in the trial; (3) Concession of unpatentability or derivation of the contested subject matter; and (4) Abandonment of the contest. 37 C.F.R. § 42.73(b). Based on the record before us, we do not find that any action has been taken by Mr. Valjakka or Suomen Biisi Oy during this proceeding that is properly construed as a request for adverse judgment. Mr. Valjakka has not taken any of the actions set forth in 37 C.F.R. § 42.73(b)(1)–(4). Mr. Valjakka has not filed or requested a disclaimer of the patent or cancellation of any claim. Mr. Valjakka also has not conceded unpatentability or abandoned the contest. To the contrary, Mr. Valjakka filed a Patent Owner Response (Paper 9), a Sur-reply (Paper 15), and a Request for Oral Argument (Paper 16). Additionally, following the District Court’s Order, Mr. Valjakka seeks to continue to act as the patent owner in this proceeding. Resp. Br. 4.” slip op. at 5
- PTAB / AIA Trials › Real party in interest / privityOther
“The circumstances of the instant proceeding starkly contrast those in FedEx, in which the district court granted a motion to dismiss without determining patent ownership. FedEx, IPR2017-01786, Paper 28, 16. In the instant proceeding, Netflix and Mr. Valjakka agree that we should not make an independent determination as to whether Mr. Valjakka has established that he has standing to take action as patent owner in these proceedings because the proper venue is the District Court, which already decided against Mr. Valjakka and granted Netflix’s Motion for Summary Judgment. Ex. 3001, 14. Based on the record before us, we decline to make an independent determination as to whether Mr. Valjakka has standing to act as a patent owner in this proceeding. Accordingly, we deny Netflix’s request to terminate this proceeding and expunge Mr. Valjakka’s papers and exhibits on the basis of our making an independent determination that Mr. Valjakka does not have standing to act as a patent owner.” slip op. at 9
NonePatents in suitUS 8,495,167 - Snap Inc. v. Playvuu, Inc.Adverse judgmentPTAB · Feb 29, 2024 · IPR2023-00848 · APJ Barbara A Parvis · IPR · Adverse judgment
The Board granted Patent Owner’s request for adverse judgment and entered judgment against Patent Owner on claims 1–11 after abandonment.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“Judgment (Paper 14, “Request for Adverse Judgment”), which states “[p]ursuant to 37 C.F.R. § 42.73(b)(4) Patent Owner makes this request for the Board to enter adverse judgment against Patent Owner with respect to claims 1-11” of the ’911 patent. Id. at 1. Patent Owner further states “Patent Owner makes this request because Patent Owner is not filing a Patent Owner Response and is abandoning this proceeding.” Id. Upon review of Patent Owner’s unopposed Request for Adverse Judgment, we grant the request for adverse judgment pursuant to 37 C.F.R. § 42.73(b)(4).” slip op. at 2
NonePatents in suitUS 10,931,911 - Motorola Mobility LLC v. Largan Precision Co., Ltd.Adverse judgmentPTAB · Jul 12, 2023 · IPR2022-01172 · APJ Jon M Jurgovan · IPR · Adverse judgment
The Board entered adverse judgment against Patent Owner on claims 1–4, 6, and 9 after it disclaimed those claims.
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.” Id. Patent Owner has disclaimed, under 37 C.F.R. § 1.321(a), claims 1–4, 6, and 9 of the ’397 patent, and explicitly requests that the Board enter adverse judgment against it with respect to claims 1–4, 6, and 9, the only claims at issue in this trial. Ex. 3001. Based on Patent Owner’s communication, and our review of Exhibit 2029, we determine that entry of judgment against Patent Owner with respect to claims 1–4, 6, and 9 of the ’397 patent is appropriate.” slip op. at 2
NonePatents in suitUS 10,564,397 - Motorola Mobility LLC v. Largan Precision Co., Ltd.Adverse judgmentPTAB · Jun 30, 2023 · IPR2022-01170 · APJ Norman H Beamer · IPR · Adverse judgment
The Board entered adverse judgment against Patent Owner on claims 1–2 and 6–10 after their disclaimer, and vacated all scheduled due dates.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“II. DISCUSSION A party may request judgment against itself at any time during a 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.” Id. Patent Owner has disclaimed, under 37 C.F.R. § 1.321(a), claims 1–2 and 6–10 of the ’487 patent, and explicitly requests that the Board enter adverse judgment against it with respect to claims 1–2 and 6–10, the only claims at issue in this trial. Ex. 3001. Based on Patent Owner’s communication, and our review of Exhibit 2024, we determine that entry of judgment against Patent Owner with respect to claims 1–2 and 6–10 of the ’487 patent is appropriate.” slip op. at 2
NonePatents in suitUS 10,209,487 - Apple Inc. v. MPH Technologies OYAdverse judgmentPTAB · May 11, 2023 · IPR2019-00820 · APJ John D Hamann · IPR · Adverse judgment
On remand, the Board entered adverse judgment against Patent Owner as to claim 4 based on its statutory disclaimer and terminated the proceeding.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“We agree with Petitioner and determine that Patent Owner requested adverse judgment against itself by filing a statutory disclaimer for claim 4. Pet. Rem. Open. 2–3. In particular, “[a]ctions construed to be a request for adverse judgment include . . . disclaimer of a claim such that the party has no remaining claim in the trial.” 37 C.F.R. § 42.73(b). Here, claim 4 was the sole remanded claim. Apple, 2022 WL 4103286, at *8 (remanding only claim 4 for this proceeding).” slip op. at 3
- RemandOther
“We agree with Petitioner and determine that Patent Owner requested adverse judgment against itself by filing a statutory disclaimer for claim 4. Pet. Rem. Open. 2–3. In particular, “[a]ctions construed to be a request for adverse judgment include . . . disclaimer of a claim such that the party has no remaining claim in the trial.” 37 C.F.R. § 42.73(b). Here, claim 4 was the sole remanded claim. Apple, 2022 WL 4103286, at *8 (remanding only claim 4 for this proceeding).” slip op. at 3
NonePatents in suitUS 7,937,581 - Apple Inc. v. Zipit Wireless, Inc.Adverse judgmentPTAB · Dec 13, 2022 · IPR2021-01129 · APJ Trevor M Jefferson · IPR · Adverse judgment
The Board entered adverse judgment against Zipit Wireless and determined claims 1, 3–7, 10, 17, 21, 22, 28, 33–39, and 43–45 unpatentable after the Patent Owner abandoned the contest.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentFwd all claims unpatentableGranted
“Pursuant to our rules, “[a]ctions construed to be a request for adverse judgment include . . . [a]bandonment of the contest.” 37 C.F.R. § 42.73(b)(4). In the present proceeding and three related proceedings, Patent Owner failed to file responses to the Petition, which is consistent with abandonment of the contest. In two closely related proceedings, IPR2021- 01130 and IPR2021-01131, however, Patent Owner filed substantive response papers and an oral hearing was held. See IPR2021-01130 Paper 10; IPR2021-01131 Paper 10. At the conclusion of the oral hearing in IPR2021-01130 and IPR2021-01131, Patent Owner addressed the present case and stated on the record that they are not contesting a final written decision or adverse judgment in the related cases in which Patent Owner did not file a response. IPR2021-01130 Paper 29, 64:3–64:20 (stating that” slip op. at 2
NonePatents in suitUS 7,894,837 - Apple Inc. v. Zipit Wireless, Inc.Adverse judgmentPTAB · Dec 13, 2022 · IPR2021-01126 · APJ Trevor M Jefferson · IPR · Adverse judgment
The Board entered adverse judgment against the Patent Owner and determined claims 22, 23, and 31–40 unpatentable based on abandonment of the contest.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentFwd all claims unpatentableGranted
“Pursuant to our rules, “[a]ctions construed to be a request for adverse judgment include . . . [a]bandonment of the contest.” 37 C.F.R. § 42.73(b)(4). In the present proceeding and three related proceedings, Patent Owner failed to file responses to the Petition, which is consistent with abandonment of the contest. In two closely related proceedings, IPR2021- 01130 and IPR2021-01131, however, Patent Owner filed substantive response papers and an oral hearing was held. See IPR2021-01130 Paper 10; IPR2021-01131 Paper 10. At the conclusion of the oral hearing in IPR2021-01130 and IPR2021-01131, Patent Owner stated on the record that they are not contesting a final written decision or adverse judgment in the related cases that Patent Owner did not file a response. IPR2021-01130 Paper 29, 64:3–64:20 (stating that Patent Owner is not contesting adverse judgment “if the Board determines [Petitioner] met their burden of proof” slip op. at 2
NonePatents in suitUS 7,292,870 - Apple Inc. v. Zipit Wireless, Inc.Adverse judgmentPTAB · Dec 13, 2022 · IPR2021-01125 · APJ Trevor M Jefferson · IPR · Adverse judgment
The Board entered adverse judgment against Zipit Wireless and determined claims 2–4, 11–14, 22, 23, and 31–33 unpatentable based on abandonment of the contest.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“Pursuant to our rules, “[a]ctions construed to be a request for adverse judgment include . . . [a]bandonment of the contest.” 37 C.F.R. § 42.73(b)(4). In the present proceeding and three related proceedings, Patent Owner failed to file responses to the Petition, which is consistent with abandonment of the contest. In two closely related proceedings, IPR2021- 01130 and IPR2021-01131, however, Patent Owner filed substantive response papers and an oral hearing was held. See IPR2021-01130 Paper 10; IPR2021-01131 Paper 10. At the conclusion of the oral hearing in IPR2021-01130 and IPR2021-01131, Patent Owner stated on the record that they are not contesting a final written decision or adverse judgment in the related cases that Patent Owner did not file a response. IPR2021-01130 Paper 29, 64:3–64:20 (stating that Patent Owner is not contesting adverse judgment “if the Board determines [Petitioner] met their burden of proof” slip op. at 2
NonePatents in suitUS 7,292,870 - Apple Inc. v. Zipit Wireless, Inc.Adverse judgmentPTAB · Dec 13, 2022 · IPR2021-01124 · APJ Trevor M Jefferson · IPR · Adverse judgment
The Board entered adverse judgment against Zipit Wireless as to claims 1, 5–10, 17–19, and 36–40, determining those claims unpatentable after Patent Owner abandoned the contest.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“Pursuant to our rules, “[a]ctions construed to be a request for adverse judgment include . . . [a]bandonment of the contest.” 37 C.F.R. § 42.73(b)(4). In the present proceeding and three related proceedings, Patent Owner failed to file responses to the Petition, which is consistent with abandonment of the contest. In two closely related proceedings, IPR2021- 01130 and IPR2021-01131, however, Patent Owner filed substantive response papers and an oral hearing was held. See IPR2021-01130 Paper 10; IPR2021-01131 Paper 10. At the conclusion of the oral hearing in IPR2021-01130 and IPR2021-01131, Patent Owner stated on the record that they are not contesting a final written decision or adverse judgment in the related cases that Patent Owner did not file a response. IPR2021-01130 Paper 29, 64:3–64:20 (stating that Patent Owner is not contesting adverse judgment “if the Board determines [Petitioner] met their burden of proof” slip op. at 2
NonePatents in suitUS 7,292,870
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.