- ROKU, Inc. v. Universal Electronics Inc.Adverse judgmentPTAB · Dec 28, 2023 · IPR2021-00263 · APJ Russell E Cass · IPR · Adverse judgment
The Board entered adverse judgment against Patent Owner on claims 1–11 because Patent Owner cancelled all challenged claims in a co-pending reexamination.
RulingsAdverse judgment- RehearingRehearing, grantedGranted
“After our Denial Decision, the Director issued an Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (“Interim Fintiv Guidance”)1, directing that “[t]he PTAB will not discretionarily deny petitions based on applying Fintiv to a 1 The Interim Fintiv Guidance is available at https://www.uspto.gov/ sites/default/files/documents/interim_proc_discretionary_denials_ aia_parallel_district_court_litigation_memo_20220621_.pdf. parallel ITC proceeding.” Interim Fintiv Guidance, 7. Following the Federal Circuit’s decision, we conducted a conference call with counsel for the parties and allowed the parties to submit additional briefing to address the status of the case, the status of any related proceedings, the Interim Fintiv Guidance, and any actions that should be taken by the panel at this point concerning this proceeding. Papers 16–18. After considering the parties’ arguments, we granted Petitioner’s Request for Rehearing on February 8, 2023, concluding that, in light of the Interim Fintiv Guidance, exercising discretion to deny institution under 35 U.S.C. § 314(a) was not warranted in this case. Paper 19, 5–12. We also determined that Petitioner had demonstrated a reasonable likelihood of success in proving that the challenged claims were unpatentable, and instituted an inter partes review of claims 1–11 of the ’317 patent with respect to all grounds set forth in the Petition. Id. at 12–37.” slip op. at 2
- Adverse judgmentAdverse judgmentGranted
“(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: . . . (2) Cancellation or disclaimer of a claim such that the party has no remaining claim in the trial. 37 C.F.R. § 42.73(b). In the ’074 Reexam, Patent Owner cancelled all of challenged claims 1–11, and the USPTO has issued a Reexamination Certificate indicating that these claims are cancelled. Ex. 2100, 2; Ex. 1046, 1:15. The Board has previously construed a patent owner’s cancellation in a reexamination of all claims challenged in a pending IPR as a request for adverse judgment under § 42.73(b). See Tarsco Bolted Tank Inc. v. Tank Connection, LLC, IPR2016-01634, Paper 16 at 2 (PTAB Aug. 24, 2017) (“Cancellation of claims 1–11” in an ex parte reexamination “is construed as a request for adverse judgment” in the corresponding IPR proceeding.); Mercedes-Benz USA, LLC v. Signal IP, Inc., IPR2015-00941, Paper 21 at 2–3 (PTAB Apr. 14, 2016) (“Pursuant to 37 C.F.R. § 42.73(b), we construe cancellation of all claims involved in this proceeding” in “a concurrent Reexamination of the” patent at issue “as a request for adverse judgment.”). We agree with the prior decisions in Tarsco and Mercedes-Benz that a patent owner’s cancellation of all challenged claims in an IPR in a co-pending ex parte reexamination is properly construed as a request for adverse judgment under 37 C.F.R. § 42.73(b). Consequently, we construe Patent Owner’s cancellation of all of the claims challenged in this IPR in the ’074 Reexam as a request for adverse judgment.” slip op. at 5
NonePatents in suitUS 10,600,317 - China Chengda Engineering Co., Ltd. v. Doriamo Ltd.Adverse judgmentPTAB · Nov 20, 2023 · IPR2023-00365 · APJ Jeffrey W Abraham · IPR · Adverse judgment
The Board entered adverse judgment against Doriamo Ltd. for claims 1–10 after it did not oppose judgment and abandoned the contest.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“II. DISCUSSION “A party may request [adverse] 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 . . . [a]bandonment of the contest.” Id. Based on Patent Owner’s failure to file substantive papers in this proceeding and its statement that it does not oppose entry of adverse judgment, we determine that entry of judgment against Patent Owner with respect to claims 1–10 of the ’852 patent is appropriate.” slip op. at 2
NonePatents in suitUS 8,591,852 - 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 - LG Electronics, Inc. / LG Electronics U.S.A., Inc. et al. v. Cypress Semiconductor Corp.Adverse judgmentPTAB · May 22, 2015 · IPR2014-01342 · APJ Patrick M Boucher · IPR · Adverse judgment
The Board granted Patent Owner’s request for adverse judgment and entered judgment against Patent Owner on claims 1–4 after disclaimer of all claims in the proceeding.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“On May 12, 2015, Patent Owner filed an executed disclaimer of claims 1–4, i.e. all of the claims involved in this proceeding, with a representation that the disclaimer “will be electronically filed with the United States Patent and Trademark Office.” Paper 19. The disclaimer is construed as a request for adverse judgment. 37 C.F.R. § 42.73(b)(2) (“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 request is granted. Accordingly, it is ORDERED that Patent Owner’s request for adverse judgment is granted; and FURTHER ORDERED that judgment is herein entered against Patent Owner with respect to claims 1–4.” slip op. at 1
NonePatents in suitUS 8,004,497 - 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 - Samsung Electronics Co., Ltd / Samsung Electronics America, Inc. et al. v. Affinity Labs Of Texas, LLCAdverse judgmentPTAB · Jul 9, 2014 · IPR2014-00212 · APJ Jon B Tornquist · IPR · Adverse judgment
The Board granted the LG Petitioners’ motions and entered adverse judgment against LG Electronics, Inc., LG Electronics, U.S.A., Inc., and LG Electronics Mobilecomm USA, Inc.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“A party may request entry of adverse judgment against itself at any time during a proceeding. See 37 C.F.R. § 42.73(b). Entry of adverse judgment against the LG Petitioners will not terminate or delay the current proceedings and Patent Owner and the remaining Petitioners do not oppose the motions. Under these circumstances, we find it is appropriate to grant the motions for adverse judgment. It is therefore ORDERED that adverse judgment be entered against LG Electronics, Inc., LG Electronics, U.S.A., Inc., and LG Electronics Mobilecomm USA, Inc. in IPR2014-00209 and IPR2014-00212.” slip op. at 2
NonePatents in suitUS 7,953,390 - Samsung Electronics Co., Ltd / Samsung Electronics America, Inc. et al. v. Affinity Labs Of Texas, LLCAdverse judgmentPTAB · Jul 9, 2014 · IPR2014-00209 · APJ Jon B Tornquist · IPR · Adverse judgment
The Board granted LG Petitioners’ motions and entered adverse judgment against them in IPR2014-00209 and IPR2014-00212.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“A party may request entry of adverse judgment against itself at any time during a proceeding. See 37 C.F.R. § 42.73(b). Entry of adverse judgment against the LG Petitioners will not terminate or delay the current proceedings and Patent Owner and the remaining Petitioners do not oppose the motions. Under these circumstances, we find it is appropriate to grant the motions for adverse judgment.” slip op. at 2
NonePatents in suitUS 7,953,390
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