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  • PTAB · Oct 1, 2025 · IPR2025-00603 · APJ Grace Karaffa Obermann · IPR · Adverse judgment

    The Board entered adverse judgment against Patent Owner based on its statutory disclaimer of claims 1–18, then terminated the proceeding.

    RulingsAdverse judgment
    • Adverse judgmentAdverse judgmentGranted

      “In other words, the Smith & Nephew decision makes plain that entry of adverse judgment (as opposed to a denial without adverse judgment) is appropriate in situations where a patentee seeks to regain, through continued prosecution, subject matter that is patentably indistinct from previously surrendered subject matter. Id. That is precisely the situation at hand. Claim 43, pending in the ’822 continuation application, is of the same or broader scope than disclaimed claim 1 of the ’529 patent, as shown in Petitioner’s claim chart:” slip op. at 4

    None
    Patents in suitUS 11,332,529
  • PTAB · Aug 28, 2024 · IPR2023-01347 · APJ Sheridan K Snedden · IPR · Adverse judgment

    The Board granted Patent Owner’s unopposed request for adverse judgment and cancelled claim 16 after Patent Owner disclaimed all interest in it.

    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.” While the motion for adverse judgment was initiated by Petitioner, Patent Owner does not oppose the motion and the record shows that Patent Owner has disclaimed all interest in claim 161 such that Patent Owner has no remaining claim in the trial, actions that are construed to be a request for adverse judgment. Id.” slip op. at 3

    None
    Patents in suitUS 10,633,344
  • PTAB · 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

    None
    Patents in suitUS 10,243,647
  • PTAB · 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

    None
    Patents 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

    None
    Patents in suitUS 5,870,163
  • PTAB · Nov 19, 2015 · IPR2015-00713 · APJ Jon B Tornquist · IPR · Adverse judgment

    The Board granted Patent Owner’s request for adverse judgment and cancelled claims 1, 2, 8, 9, 23, 24, 30, and 31.

    RulingsAdverse judgment
    • Adverse judgmentAdverse judgmentGranted

      “proceeding. 37 C.F.R. § 42.73(b). Actions construed to be a request for adverse judgment include disclaimer of the involved application or patent and cancellation or disclaimer of a claim such that the party has no remaining claim in the trial. Id. In light of Patent Owner’s disclaimer of claims 1–44 of the ’077 patent, we determine that entry of judgment against Patent Owner with respect to claims 1, 2, 8, 9, 23, 24, 30, and 31 of the ’077 patent is appropriate.” slip op. at 2

    None
    Patents in suitUS 7,035,077
  • PTAB · Oct 29, 2015 · IPR2014-00948 · APJ Jon B Tornquist · IPR · Adverse judgment

    The Board granted Patent Owner’s adverse-judgment motion, entered judgment against Patent Owner, and cancelled claims 2, 22, 23, and 25.

    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). “Judgment” is defined as “a final written decision by the Board, or a termination of a proceeding.” 37 C.F.R. § 42.2. Although Patent Owner uses the term “termination” in its Motion, it did not submit the Motion under 37 C.F.R. § 42.72 and it did not explain why termination is appropriate in this circumstance. See 37 C.F.R. § 42.72 (noting that the Board may terminate a trial without rendering a final written decision “where appropriate,” such as when the trial is consolidated with another proceeding or pursuant to a settlement under 35 U.S.C. § 317(a)). Under the circumstances presented here, we see no reason not to grant Patent Owner’s Motion. Additionally, for the reasons discussed above, this Decision is a Final Written Decision, not a termination of the proceeding.1” slip op. at 3

    None
    Patents in suitUS 6,370,371
  • PTAB · Oct 29, 2015 · IPR2014-00947 · APJ Jon B Tornquist · IPR · Adverse judgment

    The Board granted Patent Owner’s motion for adverse judgment and cancelled claims 1, 23, 25, 161, 193, and 202.

    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). “Judgment” is defined as “a final written decision by the Board, or a termination of a proceeding.” 37 C.F.R. § 42.2. Although Patent Owner uses the term “termination” in its Motion, it did not submit the Motion under 37 C.F.R. § 42.72 and did not explain why termination is appropriate in this circumstance. See 37 C.F.R. § 42.72 (noting that the Board may terminate a trial without rendering a final written decision “where appropriate,” such as when the trial is consolidated with another proceeding or pursuant to a settlement under 35 U.S.C. § 317(a)). Under the circumstances presented here, we see no reason not to grant Patent Owner’s Motion. Additionally, for the reasons discussed above, this Decision is a Final Written Decision, not a termination of the proceeding.1” slip op. at 3

    None
    Patents in suitUS 6,061,551
  • PTAB · Oct 29, 2015 · IPR2014-00946 · APJ Bart A Gerstenblith · IPR · Adverse judgment

    The Board granted Patent Owner’s motion for adverse judgment and cancelled claims 1, 82, 90, and 91.

    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). “Judgment” is defined as “a final written decision by the Board, or a termination of a proceeding.” 37 C.F.R. § 42.2. Although Patent Owner uses the term “termination” in its Motion, it did not submit the Motion under 37 C.F.R. § 42.72 and did not explain why termination is appropriate in this circumstance. See 37 C.F.R. § 42.72 (noting that the Board may terminate a trial without rendering a final written decision “where appropriate,” such as when the trial is consolidated with another proceeding or pursuant to a settlement under 35 U.S.C. § 317(a)). Under the circumstances presented here, we see no reason not to grant Patent Owner’s Motion. Additionally, for the reasons discussed above, this Decision is a Final Written Decision, not a termination of the proceeding.1” slip op. at 3

    • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

      “(collectively, “Petitioner”) filed a Petition for inter partes review of U.S. Patent No. 6,266,518 B1 (“the ’518 patent”). Paper 1. ParkerVision, Inc. (“Patent Owner”) filed a Preliminary Response on September 24, 2014. Paper 7. On December 18, 2014, we instituted this inter partes review of claims 1, 82, 90, and 91 of the ’518 patent. Paper 8.” slip op. at 2

    None
    Patents in suitUS 6,266,518
  • PTAB · Jan 14, 2015 · IPR2014-01461 · APJ Jon B Tornquist · IPR · Adverse judgment

    The Board granted Patent Owner’s request for adverse judgment, entered judgment against it on claims 1–20, and cancelled those claims.

    RulingsAdverse judgment
    • Adverse judgmentAdverse judgmentGranted

      “A party1 may request judgment against itself at any time during a proceeding. 37 C.F.R. § 42.73(b). Although not titled as such, we interpret Patent Owner’s Preliminary Response as a request for adverse judgment under 37 C.F.R. § 42.73(b). Accordingly, it is ORDERED that Patent Owner’s request for judgment against itself is granted; FURTHER ORDERED that judgment is entered against Patent Owner under 37 C.F.R. § 42.73(b) with respect to claims 1–20 of U.S. Patent No. 7,244,279; and FURTHER ORDERED that claims 1–20 of U.S. Patent No. 7,244,279 are CANCELLED.” slip op. at 2

    None
    Patents in suitUS 7,244,279
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