- Meta Platforms, Inc. v. Sitnet, LLCAdverse judgmentPTAB · Apr 18, 2025 · IPR2024-00528 · APJ Kara L Szpondowski · IPR · Adverse judgment
The Board granted Patent Owner’s request for adverse judgment, canceled claims 1–11, 22, and 23, and terminated the IPR.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“A patent owner may request judgment against itself “at any time during a proceeding.” 37 C.F.R. §42.73(b). Actions construed to be a request for adverse judgment include cancellation of patent claims such that a party has no remaining claim in the trial. 37 C.F.R. § 42.73(b)(2). Patent Owner’s request to cancel claims 1–11, 22, and 23 of the ’932 patent leaves no claims remaining in the trial. Accordingly, entry of adverse judgment to Patent Owner pursuant to 37 C.F.R. § 42.73(b) is appropriate. ORDER In consideration of the foregoing, it is hereby: ORDERED that Patent Owner’s request for adverse judgment (Paper 22) is granted; FURTHER ORDERED that claims 1–11, 22, and 23 of the ’932 patent shall be cancelled;1 FURTHER ORDERED that adverse judgment is entered against Patent Owner with respect to claims 1–11, 22, and 23 of the ’932 patent pursuant to 37 C.F.R. § 42.73(b)(2);” slip op. at 2
NonePatents in suitUS 8,249,932 - BMW Of North America, LLC / Mercedes-Benz USA, LLC v. Michigan Motor Technologies, LLCAdverse judgmentPTAB · Jun 12, 2024 · IPR2023-01032 · APJ Scott B Howard · IPR · Adverse judgment
The Board denied Patent Owner’s motion to terminate and entered adverse judgment against Patent Owner on claims 1–7 because it disclaimed all claims in the trial.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“unobjected to. See Mot. 1 (Patent Owner not objecting to entry of adverse judgment); Opp. 2 (Petitioner not opposing entry of adverse judgment). The Board construes an action cancelling or disclaiming claims such that no challenged claims remain in the trial as a request for adverse judgment. 37 C.F.R. § 42.73(b)(2) (“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.”); see also McAfee, Inc. v. CAP Co., Ltd., IPR2016-00211, Paper 19 (PTAB Apr. 5, 2017) (entering adverse judgment based on motion to amend seeking cancellation of claims remaining in the trial). In this case, the Board instituted trial on claims 1–7 of the ’565 patent, none of which remains in the trial following Patent Owner’s statutory disclaimer. Ex. 2002, 3 (disclaiming claims 1–7). Accordingly, we construe Patent Owner’s disclaimer as a request for adverse judgment, and we grant that request.” slip op. at 3
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Denied
“We agree with Petitioner. A motion to terminate is governed by 37 C.F.R. § 42.72 (2023). Under 37 C.F.R. § 42.72, “[t]he Board may terminate a trial without rendering a final written decision, where appropriate, including where the trial is consolidated with another proceeding or pursuant to a joint request under 35 U.S.C. [§] 317(a) or 327(a).” In this case, there is no “consolidat[ion] . . . or . . . a joint request under 35 U.S.C. [§] 317(a) or 327(a),” so the application of § 42.72 here is unclear.” slip op. at 3
NonePatents in suitUS 6,581,565 - BMW Of North America, LLC v. Michigan Motor Technologies, LLCAdverse judgmentPTAB · Jun 11, 2024 · IPR2023-01031 · APJ Scott B Howard · IPR · Adverse judgment
The Board denied Patent Owner’s motion to terminate and entered adverse judgment against it on claims 1, 2, 4–7, and 9–13 because it disclaimed all claims in the trial.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“However, application of section 42.73 is straightforward and unobjected to. See Paper 23, 3 (Patent Owner not objecting to entry of adverse judgment). The Board construes an action cancelling or disclaiming claims such that no challenged claims remain in the trial as a request for adverse judgment. 37 C.F.R. § 42.73(b)(2) (“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.”); see also McAfee, Inc. v. CAP Co., Ltd., IPR2016-00211, Paper 19 (PTAB Apr. 5, 2017) (entering adverse judgment based on motion to amend seeking cancellation of claims remaining in the trial). In this case, the Board instituted trial on claims 1, 2, 4–7, and 9–13 of the ’482 patent, none of which remains in the trial following Patent Owner’s statutory disclaimer. Ex. 2005, 5 (disclaiming claims 1, 2, 4–7, and 9–13). Accordingly, we construe Patent Owner’s disclaimer as a request for adverse judgment, and we grant that request.” slip op. at 4
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Denied
“Patent Owner’s request as a motion to terminate pursuant to 37 C.F.R. § 42.72 (2023). Under 37 C.F.R. § 42.72, “[t]he Board may terminate a trial without rendering a final written decision, where appropriate, including where the trial is consolidated with another proceeding or pursuant to a joint 2 Patent Owner did not state that it met-and-conferred with Petitioner. Nor did Patent Owner request authorization to file a motion to terminate the proceedings. request under 35 U.S.C. 317(a) or 327(a).” In this case, there is no “consolidat[ion] . . . or a joint request under 35 U.S.C. 317(a) or 327(a),” so the application of § 42.72 here is unclear.” slip op. at 3
NonePatents in suitUS 8,909,482 - Stmicroelectronics, Inc. v. Optical Licensing, LLCAdverse judgmentPTAB · Dec 22, 2022 · IPR2021-01593 · APJ Neil T Powell · IPR · Adverse judgment
The Board granted Patent Owner’s request for adverse judgment, entered a final written decision, cancelled oral argument, and terminated the proceeding.
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. Here, Patent Owner has expressly requested entry of adverse judgment. Patent Owner’s request for adverse judgment is granted.” slip op. at 2
NonePatents in suitUS 6,791,898 - 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.