- Early Warning Services, LLC v. Fintech Innovation Associates LLCAdverse judgmentPTAB · Feb 17, 2023 · PGR2022-00046 · APJ Robert L Kinder · PGR · Adverse judgment
The Board entered adverse judgment against Patent Owner after it disclaimed the sole challenged claim, which the Board cancelled.
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.” Id.” slip op. at 3
None - 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 - 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 - Tarsco Bolted Tank Inc. v. Tank Connection, LLCAdverse judgmentPTAB · Aug 25, 2017 · IPR2016-01634 · APJ Meredith C Petravick · IPR · Adverse judgment
The Board entered adverse judgment against Patent Owner on claims 1–11 after their cancellation and Patent Owner’s abandonment of the contest.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“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.” 37 C.F.R. § 42.73(b)(2). Ex Parte Reexamination Certificate No. 9,187,921 C1, canceling claims 1–11 of the ’921 patent, issued on July 24, 2017. Ex. 3001; see Paper 14 (memorializing a conference call during which Patent Owner indicated that it was allowing the claims to be canceled in the reexamination intentionally). Claims 1–11 are all of the claims of the ’921 patent and all claims at issue in this inter partes review. Cancellation of claims 1–11 is construed as a request for adverse judgment. Additionally, “[a]ctions construed to be a request for adverse judgment include: . . . [a]bandonment of the contest.” 37 C.F.R. § 42.73(b)(4). Patent Owner did not file a Patent Owner’s Response or a Motion to Amend in this inter partes review by the May 17, 2017 deadline, set in the Scheduling Order (Paper 13), and did not file a paper in response to the Order to Show Cause by the August 22, 2017 deadline. Patent Owner’s lack of response is consistent with abandonment of the contest. Abandonment of the contest is construed as a request for adverse judgement. slip op. at 2
NonePatents in suitUS 9,187,921 - Volkswagen Group Of America, Inc. v. West View Research, LLCAdverse judgmentPTAB · 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
NonePatents 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
NonePatents in suitUS 5,870,163 - Denso Corporation v. Netlatch, LLCAdverse judgmentPTAB · Mar 8, 2016 · IPR2015-00473 · APJ Ken B Barrett · IPR · Adverse judgment
The Board granted Continental’s request for adverse judgment as patent owner for claims 14, 17, 27, and 31.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“A party may request judgment against itself at any time during a proceeding. 37 C.F.R. § 42.73(b). Pursuant to 37 C.F.R. § 42.73(b)(3), “[c]oncession of unpatentability” may be construed as a request for adverse judgment. We understand Continental to expressly request entry of adverse judgment against itself as the current patent owner. IPR2015-00481, Continental’s Ownership Statement 5. Additionally, we treat Continental’s concession that certain challenged claims are unpatentable (id. at 5; see IPR2015-00481, Paper 4 (Petition) 3–4 (challenging claims 14, 17, 31, and 33 of the ’431 patent)) as a request for adverse judgment at least as to those claims. 37 C.F.R. § 42.73(b)(3). Under these circumstances, entry of judgment adverse to Patent Owner Continental is appropriate.” slip op. at 7
- PTAB / AIA Trials › Real party in interest / privityDecided for patent owner
“assignment, and found that neither weighed in favor of Mr. Wingard. Id. at 9–10. The Court ultimately found, “at the time of the [bankruptcy] filing, that the patent was owned by Mr. Wingard personally, and, therefore, became part of the [Bankruptcy] Estate,” and the Court granted the Trustee’s motion to sell the patent. Id. at 10, 11; see also Ex. 1020 (Order granting the motion). The time to appeal the order has expired and no appeal was sought. Ex. 1017, 2 (citing Fed. R. Bankr. P. 8002). In an assignment dated December 17, 2015, the Bankruptcy Trustee assigned to Continental the entire right, title, and interest in the ’431 patent. Ex. 1017. An assignment from the Trustee to Continental Automotive GmbH is recorded in the USPTO at Reel/Frame 037329/0544. Ex. 3001. II. ANALYSIS In light of the Bankruptcy Court’s Order and the authorized sale of the ’431 patent, we recognize Continental as the current owner of the ’431 patent for purposes of this inter partes review proceeding. Continental asserts in the related 481 case: “because Continental is now the patent owner and has represented that the 431 patent claims are invalid, the claims should be found unpatentable either by way of a final determination or in response to a request for adverse judgment.” IPR2015-00481, Continental’s Ownership Statement 5.6 Continental also indicates that the same request” slip op. at 6
NonePatents in suitUS 5,530,431 - PTAB · Mar 8, 2016 · IPR2015-00481 · APJ Ken B Barrett · IPR · Adverse judgment
The Board granted Continental’s request for adverse judgment on claims 14, 17, 31, and 33 after Continental, as patent owner, conceded those claims were unpatentable.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“A party may request judgment against itself at any time during a proceeding. 37 C.F.R. § 42.73(b). Pursuant to 37 C.F.R. § 42.73(b)(3), “[c]oncession of unpatentability” may be construed as a request for adverse judgment. 5 Continental also asserts that Netlatch should be dismissed as a party and that all papers filed by Netlatch expunged. Continental’s Ownership Statement 5. Continental does not persuade us that those steps are necessary. See 37 C.F.R. § 41.14 (“The record of a proceeding, including documents and things, shall be made available to the public, except as otherwise ordered.”); Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,760 (Aug. 14, 2012) (referring to “the public’s interest in maintaining a complete and understandable file history”). We understand Continental to expressly request entry of adverse judgment against itself as the current patent owner. Continental’s Ownership Statement 5. Additionally, we treat Continental’s concession that the challenged claims are unpatentable (id. at 5; see Pet. 3–4) as a request for adverse judgment. 37 C.F.R. § 42.73(b)(3). Under these circumstances, entry of judgment adverse to Patent Owner Continental is appropriate.” slip op. at 6
NonePatents in suitUS 5,530,431
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.