Granting Request for Adverse Judgment IPR2013-00122


In its Decision, the Board granted Patent Owner’s motion (i) to withdraw Patent Owner’s Motion to Amend Claims, (ii) to cancel claims 1-6 of the ’641 patent, which were all of the claims in this IPR, and (iii) to enter an adverse judgment. Under 35 C.F.R. § 42.73(b), a party may request judgment against itself at any time during a proceeding. Upon granting judgment, the Board also lifted the stay on a co-pending ex parte reexamination proceeding, filed as a supplemental examination, for necessary action consistent with the orders of the Board in the IPR. Continue reading

Entering Adverse Judgment and Denying Request for a Final Written Decision IPR2013-00605

Takeaway: A Patent Owner’s disclaiming the only challenged claim may be construed as a request for adverse judgment resulting in an entry of judgment rather than a final written decision.

In its Order, the Board denied Petitioner’s Motion Requesting a Final Written Decision in view of Patent Owner’s disclaimer of claim 23 of the ’229 Patent, which is the only claim challenged in the proceeding. Petitioner argued that because Patent Owner filed the disclaimer after receiving the Board’s Institution Decision, any order entering judgment should be designated a final written decision and entering judgment as a final written decision enhances the estoppel effect of the order in the event Patent Owner seeks a claim that is not patentably distinct from claim 23 in another patent application pending before the Office. Upon inquiry from the Board, counsel for Petitioner noted that Petitioner does not oppose mere entry of judgment in this proceeding based on the disclaimer. Citing 37 C.F.R. § 42.73(b)(2), the Board found that Patent Owner’s disclaimer is construed as a request for adverse judgment and because Petitioner does not oppose entry of judgment, the Board entered judgment in a separate order (Paper 14). Continue reading