- Apple Inc. v. Ald Social, LLCAdverse judgmentPTAB · Jul 23, 2024 · IPR2023-01399 · APJ Barbara A Benoit · IPR · Adverse judgment
The Board entered adverse judgment against ALD Social, LLC on claims 1–16 of the ’158 patent and terminated IPR2023-01399 after finding Patent Owner unequivocally abandoned the contest.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“judgment against itself at any time during a proceeding, and abandonment of the contest is construed by the Board to be a request for adverse judgment. See IPR2023-01398, Paper 8, 3 (citing 37 C.F.R. § 42.73(b)); IPR2023-01399, Paper 7, 3 (citing 37 C.F.R. § 42.73(b)). Our orders also stated: Under the specific circumstances of this case, we determine Patent Owner’s failure to file long-overdue mandatory notices required by 37 C.F.R. § 42.8(a)(2) to demonstrate Patent Owner’s abandonment of the contest. Under 37 C.F.R. § 42.5(c), in the particular circumstances of this case, and in the interests of justice, we set a deadline for Patent Owner to file mandatory notices pursuant to 37 C.F.R. § 42.8(a)(2) no later than June 10, 2024. IPR2023-01398, Paper 8, 4 (emphasis in original); IPR2023-01399, Paper 7, 4 (emphasis in original). Our orders further explained that we “would view, in the particular circumstances of this case, Patent Owner’s filing of mandatory notices by the deadline as an indication that Patent Owner had not abandoned the contest.” IPR2023-01398, Paper 8, 4; IPR2023-01399, Paper 7, 4.” slip op. at 5
NonePatents in suitUS 9,402,158 - Apple Inc. v. Ald Social, LLCAdverse judgmentPTAB · Jul 23, 2024 · IPR2023-01398 · APJ Barbara A Benoit · IPR · Adverse judgment
The Board entered adverse judgment against ALD Social, LLC on claims 1–14 of the ’054 patent and terminated IPR2023-01398 after finding unequivocal abandonment.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“judgment against itself at any time during a proceeding, and abandonment of the contest is construed by the Board to be a request for adverse judgment. See IPR2023-01398, Paper 8, 3 (citing 37 C.F.R. § 42.73(b)); IPR2023-01399, Paper 7, 3 (citing 37 C.F.R. § 42.73(b)). Our orders also stated: Under the specific circumstances of this case, we determine Patent Owner’s failure to file long-overdue mandatory notices required by 37 C.F.R. § 42.8(a)(2) to demonstrate Patent Owner’s abandonment of the contest. Under 37 C.F.R. § 42.5(c), in the particular circumstances of this case, and in the interests of justice, we set a deadline for Patent Owner to file mandatory notices pursuant to 37 C.F.R. § 42.8(a)(2) no later than June 10, 2024. IPR2023-01398, Paper 8, 4 (emphasis in original); IPR2023-01399, Paper 7, 4 (emphasis in original). Our orders further explained that we “would view, in the particular circumstances of this case, Patent Owner’s filing of mandatory notices by the deadline as an indication that Patent Owner had not abandoned the contest.” IPR2023-01398, Paper 8, 4; IPR2023-01399, Paper 7, 4.” slip op. at 5
NonePatents in suitUS 9,198,054 - Nichia Corporation v. Document Security Systems, Inc.Adverse judgmentPTAB · Nov 18, 2022 · IPR2018-01165 · APJ Barbara A Benoit · IPR · Adverse judgment
The Board granted adverse judgment against Patent Owner as to claims 16–19 after their statutory disclaimer and terminated the proceeding.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“Moreover, 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.” The only claims before us on remand have been disclaimed. Accordingly, we construe Patent Owner’s disclaimer to be a request for adverse judgment as to those claims which remain before us, which we now grant.” slip op. at 3
- RemandOther
“Written Decision to the United States Court of Appeals for the Federal Circuit. Papers 31, 32. The court issued its decision affirming our findings as to all claims except claims 15–19. Nichia Corp. v. Document Sec. Sys., Inc., Nos. 2020-2261, 2020-2287, 2022 WL 1218036, at *1 (Fed. Cir. Apr. 26, 2022). Specifically, the court reversed our determination that Petitioner had not shown independent claim 15 to be unpatentable and remanded for further proceedings regarding dependent claims 16–19. Id. On June 14, 2022, the court issued the formal mandate. Paper 33. On June 23, 2022, Patent Owner statutorily disclaimed claims 16–19 of the ’087 patent. Thus, claims 16–19 are no longer part of this proceeding and no issues remain for us to consider on remand. See Sanofi-Aventis U.S., LLC v. Dr. Reddy’s Labs., Inc., 933 F.3d 1367, 1373 (Fed. Cir. 2019) (noting that disclaiming claims effectively eliminates those claims from the patent as though the disclaimed claims had never existed (internal quotations and citations omitted)); see also Asetek Danmark A/S v. CoolIT Sys., Inc., IPR2020-00747, Paper 42 at 6 (PTAB Sept. 30, 2021) (determining that a proceeding); cf. 37 C.F.R. § 42.107(e) (“No inter partes review will be instituted based on disclaimed claims.”).” slip op. at 2
NonePatents in suitUS 7,524,087 - 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 - Avx Corporation v. Greatbatch Ltd.Adverse judgmentPTAB · 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
NonePatents in suitUS 7,035,077 - Dr. Michael Farmwald / RPX Corporation v. Parkervision, Inc.Adverse judgmentPTAB · 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
NonePatents in suitUS 6,370,371 - Dr. Michael Farmwald / RPX Corporation v. Parkervision, Inc.Adverse judgmentPTAB · 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
NonePatents in suitUS 6,061,551 - Dr. Michael Farmwald / RPX Corporation v. Parkervision, Inc.Adverse judgmentPTAB · 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
NonePatents in suitUS 6,266,518 - Avx Corporation v. Greatbatch Ltd.Adverse judgmentPTAB · 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
NonePatents in suitUS 7,244,279 - PTAB · Oct 8, 2014 · IPR2014-00284 · APJ Barbara A Benoit · IPR · Adverse judgment
The Board granted Lifeport Sciences’ request for adverse judgment after it disclaimed claims 1-3, 9-18, 23, 27-31, and 33-35.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“The Board construes disclaimer of all claims at issue in a trial as a request for adverse judgment. 37 C.F.R. § 42.73(b)(2). Because Lifeport Sciences has disclaimed all claims at issue in this proceeding, entry of judgment against it is appropriate. Accordingly, it is ORDERED that Lifeport Sciences’ request for judgment against itself with respect to claims 1-3, 9-18, 23, 27-31, and 33-35 of U.S. Patent No. 5,562,728 is granted;” slip op. at 2
NonePatents in suitUS 5,562,728
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.