- Dji Europe B.V. v. Textron Innovations Inc.Adverse judgmentPTAB · Feb 15, 2023 · IPR2022-00163 · APJ Scott A Daniels · IPR · Adverse judgment
The Board entered adverse judgment against the Patent Owner on claims 1–8, 10–13, and 15–25 after those claims were statutorily disclaimed.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“indicating that all challenged claims had been disclaimed, requesting adverse judgment under 37 C.F.R. § 42.73(b)(2), and entering the respective Disclaimer, dated November 16, 2022, into the record of this proceeding as Exhibit 2020. Paper 18. Patent Owner’s disclaimer of claims 1–8, 10–13, and 15–25 means that Patent Owner has no claims remaining in the present proceeding and adverse judgement is therefore appropriate. II. ORDER In consideration of the foregoing, it is hereby: ORDERED that adverse judgment is entered under 37 C.F.R. § 42.73(b) against Patent Owner with respect to claims 1–8, 10–13, and 15– 25 of the ’647 patent; and” slip op. at 2
NonePatents in suitUS 10,243,647 - Early Warning Services, LLC / Samsung Electronics Co., Ltd. v. Wepay Global Payments LLCAdverse judgmentPTAB · Feb 9, 2023 · PGR2022-00045 · APJ Grace Karaffa Obermann · PGR · Adverse judgment
The Board entered adverse judgment against Patent Owner and cancelled claim 1 based on statutory disclaimers; alternatively, it held claim 1 unpatentable on every asserted ground.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“first embodiment, including Figures 1 and 2. Ex. 1106; Paper 32, 2. On January 26, 2023, Patent Owner filed a statutory disclaimer of the second embodiment, including Figures 3, 4, and 5. Ex. 1107; Paper 32, 2. Patent Owner successfully paid the statutory disclaimer fees in connection with both disclaimers. Ex. 1106, 4; Ex. 1107, 4; Paper 32, 2–3. Based on the information presented, we find that Patent Owner, by disclaiming all figures and embodiments described in the ’702 patent, has disclaimed the entire scope of the sole design claim at issue, such that no challenged claim remains in this proceeding. Specifically, in that regard, the ’702 patent claims and describes two embodiments, where the first embodiment is depicted in Figures 1 and 2, and the second embodiment is depicted in Figures 3, 4, and 5. Ex. 1001, code (57). The statutory disclaimers, taken together, disclaim both embodiments and all five figures set forth in the ’702 patent. Exs. 1106, 1107. Accordingly, we determine that adverse judgment against Patent Owner based on the disclaimers is warranted. 37 C.F.R. §§ 42.73(b)(1), 42.73(b)(2); Paper 32, 3.8” slip op. at 6
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“In particular, we find that Reddy discloses a design having substantially the same overall appearance as the claimed design, as shown in Petitioner’s comparison illustration reproduced below. Paper 22, 10 (citing Pet. 63). The above illustration compares the claimed design in the upper half to Reddy’s design in the lower half. Both designs include an image of a Three Square Arrangement9 followed by an image of “a $0.00 in practically identical style and font.” Id. at 10–11 (quoting Pet. 64). We determine that Petitioner proves by a preponderance of the evidence, moreover, “that ‘the overall visual effect of the claimed design,’ when compared to ‘the design disclosed in Reddy[,] would be substantially the same to an ordinary observer.’” Id. at 11 (alteration in original) (citation omitted); Pet. 64–67 (and evidence cited therein). Based on the full trial record, we agree with Petitioner and find that “there is no material difference” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“To the extent “any ‘slightly different spacing of the squares,’ as between the claimed and prior art designs,” is not de minimus, we find “that the ordinary designer would have modified Reddy’s design to mirror the claimed design” in order “to increase the amount of data” contained in the code. Paper 22, 13 (quoting Pet. 72 (citing Ex. 1002 ¶ 97)). The ordinary designer, considering Reddy alone, “would find the claimed ‘design as a whole has substantially the same overall visual appearance as the Reddy design,’ as so modified.” Id. (quoting Pet. 73 (citing Ex. 1002 ¶ 99)). Based on the full trial record, we determine that Reddy renders the challenged claim unpatentable as obvious.” slip op. at 9
- BurdenUnpatentable
“We conclude that Patent Owner has forfeited any arguments opposing the information advanced in the Petition with respect to the other asserted grounds of invalidity. We adopt the reasoning set forth in the Petition with respect to those grounds. See Pet. 23–45 (arguments and evidence directed to publication and accessibility of SGQR, GrabPay, Digital Debit Video, and Digital Debit Patent), 73–88 (arguments and evidence directed to the grounds that assert SGQR, GrabPay, Digital Debit Video, and Digital Debit Patent). On this record, Petitioner demonstrates by a preponderance of the evidence that the subject matter of the challenged claim would have been obvious based on the other grounds asserted in the Petition. Id.” slip op. at 9
§ 102 anticipation§ 103 obviousness - Early Warning Services, LLC / Samsung Electronics Co., Ltd. v. Wepay Global Payments LLCAdverse judgmentPTAB · Feb 9, 2023 · PGR2022-00031 · APJ Grace Karaffa Obermann · PGR · Adverse judgment
Adverse judgment was entered after Patent Owner disclaimed the sole claim; alternatively, the claim was held unpatentable on the asserted anticipation and obviousness grounds.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“On October 5, 2022, Patent Owner filed a statutory disclaimer of the first embodiment, including Figures 1 and 2. Ex. 1106; Paper 32, 2. On January 26, 2023, Patent Owner filed a statutory disclaimer of the second embodiment, including Figures 3, 4, and 5. Ex. 1107; Paper 32, 2. Patent Owner successfully paid the statutory disclaimer fees in connection with both disclaimers. Ex. 1106, 4; Ex. 1107, 4; Paper 32, 2–3. Based on the information presented, we find that Patent Owner, by disclaiming all figures and embodiments described in the ’702 patent, has disclaimed the entire scope of the sole design claim at issue, such that no challenged claim remains in this proceeding. Specifically, in that regard, the ’702 patent claims and describes two embodiments, where the first embodiment is depicted in Figures 1 and 2, and the second embodiment is depicted in Figures 3, 4, and 5. Ex. 1001, code (57). The statutory disclaimers, taken together, disclaim both embodiments and all five figures set forth in the ’702 patent. Exs. 1106, 1107. Accordingly, we determine that adverse judgment against Patent Owner based on the disclaimers is warranted. 37 C.F.R. §§ 42.73(b)(1), 42.73(b)(2); Paper 32, 3.8” slip op. at 6
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“In particular, we find that Reddy discloses a design having substantially the same overall appearance as the claimed design, as shown in Petitioner’s comparison illustration reproduced below. Paper 22, 10 (citing Pet. 63). The above illustration compares the claimed design in the upper half to Reddy’s design in the lower half. Both designs include an image of a Three Square Arrangement9 followed by an image of “a $0.00 in practically identical style and font.” Id. at 10–11 (quoting Pet. 64). We determine that Petitioner proves by a preponderance of the evidence, moreover, “that ‘the overall visual effect of the claimed design,’ when compared to ‘the design disclosed in Reddy[,] would be substantially the same to an ordinary observer.’” Id. at 11 (alteration in original) (citation omitted); Pet. 64–67 (and evidence cited therein). Based on the full trial record, we agree with Petitioner and find that “there is no material difference” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“To the extent “any ‘slightly different spacing of the squares,’ as between the claimed and prior art designs,” is not de minimus, we find “that the ordinary designer would have modified Reddy’s design to mirror the claimed design” in order “to increase the amount of data” contained in the code. Paper 22, 13 (quoting Pet. 72 (citing Ex. 1002 ¶ 97)). The ordinary designer, considering Reddy alone, “would find the claimed ‘design as a whole has substantially the same overall visual appearance as the Reddy design,’ as so modified.” Id. (quoting Pet. 73 (citing Ex. 1002 ¶ 99)). Based on the full trial record, we determine that Reddy renders the challenged claim unpatentable as obvious.” slip op. at 9
§ 102 anticipation§ 103 obviousness - PTAB · Jan 31, 2018 · IPR2017-01777 · APJ Patrick R Scanlon · IPR · Adverse judgment
The Board denied institution because Patent Owner recorded a statutory disclaimer of all challenged claims.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentDenied
“Under 37 C.F.R. § 42.107(e), “patent owner may file a statutory disclaimer under 35 U.S.C. 253(a) in compliance with § 1.321(a) of this chapter, disclaiming one or more claims in the patent” and “[n]o inter partes review will be instituted based on disclaimed claims.” A disclaimer under 35 U.S.C. § 253(a) is “considered as part of the original patent” once it is “recorded” in the Office. 35 U.S.C. § 253(a).” slip op. at 3
Discretionary denialPatents in suitUS 8,167,043 - Juniper Networks, Inc. / Brocade Communications Systems, Inc. et al. v. Mobile Telecommunications Technologies, LLCAdverse judgmentPTAB · Oct 31, 2017 · IPR2017-00640 · APJ Meredith C Petravick · IPR · Adverse judgment
Claims 1–5 were cancelled and adverse judgment was entered against Patent Owner after it requested cancellation of all claims at trial.
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.” 37 C.F.R. § 42.73(b)(2). Patent Owner requests cancellation of claims 1–5 of U.S. Patent No. 5,659,891 (“the ’891 patent) and entry of adverse judgment against it. Paper 20. Claims 1–5 are all claims of the ’891 patent and all claims at trial. We determine that entry of adverse judgment against Patent Owner is appropriate. Accordingly, it is: ORDERED that claims 1–5 of U.S. Patent No. 5,659,891 are cancelled; ORDERED that adverse judgment is entered under 37 C.F.R. § 42.73(b) against Patent Owner; and FURTHER ORDERED that this Order constitutes a final written decision under 35 U.S.C. § 318(a).” slip op. at 1
NonePatents in suitUS 5,659,891 - Caterpillar Inc. v. Esco CorporationAdverse judgmentPTAB · Sep 23, 2015 · IPR2015-00409 · APJ Phillip J Kauffman · IPR · Adverse judgment
The Board entered adverse judgment against ESCO after it disclaimed the only instituted claim, claim 14, and terminated the proceeding.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“DISCUSSION Under 37 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 disclaimer of a claim such that the party has no remaining claim in the trial. See 37 C.F.R. § 42.73(b)(2). Claim 14 of the ’472 patent is the only claim for which trial was instituted; Patent Owner has disclaimed claim 14, and consequently, Patent Owner has no remaining claim in this inter partes review. Under these circumstances, the entry of judgment adverse to the Patent Owner and termination of these proceedings is appropriate.” slip op. at 2
NonePatents in suitUS 8,689,472 - Askeladden LLC v. Isourceloans LLCAdverse judgmentPTAB · Jun 16, 2015 · IPR2015-00138 · APJ Jeremy M Plenzler · IPR · Adverse judgment
The Board entered adverse judgment against Patent Owner at its request and cancelled instituted claims 21, 22, 28, 31, 32, and 36.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“claims 21–41 of U.S. Patent No. 7,340,435 B1 (Paper 2), and we instituted trial for claims 21, 22, 28, 31, 32, and 36 on April 20, 2015 (Paper 8). On June 15, 2015, Patent Owner (iSourceloans LLC) filed a request for Adverse Judgment pursuant to 37 C.F.R. § 42.73(b)(4). Paper 12. Under 37 C.F.R. § 42.73(b), a party may request judgment against itself at any time during a proceeding. Patent Owner acknowledges that, in accordance with its request, the Board will terminate the proceeding and cancel all instituted claims. Id. at 2. Patent Owner further acknowledges that its actions subject it to the estoppel provisions of 37 C.F.R. § 42.73(d). Id. ORDER For the reasons given, it is ORDERED that adverse judgment is entered against Patent Owner under 37 C.F.R. § 42.73(b); and” slip op. at 2
NonePatents in suitUS 7,340,435 - ZTE (USA), Inc. v. Pragmatus Mobile LLCAdverse judgmentPTAB · Aug 11, 2014 · IPR2014-00670 · APJ Glenn J Perry · IPR · Adverse judgment
The Board granted the parties’ joint motion and terminated the proceeding by settlement before deciding the petition.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“The parties have requested that these trial proceedings be terminated pursuant to a settlement. On August 5, 2014, the Board authorized (Paper 8) the parties to file a Joint Motion to Terminate this proceeding along with a true copy of any and all settlement agreements between them related to the patent at issue. On August 8, 2014, the parties filed a Joint Motion to Terminate (Paper 9) in accordance with 35 U.S.C. § 327(a) and 37 C.F.R. § 42.72. The parties also filed a Joint Motion to Treat the Parties’ Settlement Agreement as Business Confidential pursuant to 35 U.S.C. § 317(b) and Rule 42.74 (Paper 10). The settlement agreement (Paper 11), marked “Confidential,” purports to settle matters between the parties with respect to the patent at issue in this inter partes review. This inter partes review is in its preliminary stage. A decision on the Corrected Petition (Paper 4) has not yet been rendered. The parties have not identified any other USPTO proceedings related to the patent at issue. Under these circumstances, the Board determines that it is appropriate to enter judgment1 and terminate the trial without rendering a final written decision under 37 C.F.R. § 42.72.” slip op. at 2
NonePatents in suitUS 8,466,795
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.