(a) A judgment, except in the case of a termination, disposes of all issues that were, or by motion reasonably could have been, raised and decided.
(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:
(1) Disclaimer of the involved application or patent;
(2) Cancellation or disclaimer of a claim such that the party has no remaining claim in the trial;
(3) Concession of unpatentability or derivation of the contested subject matter; and
(4) Abandonment of the contest.
(c) Recommendation. The judgment may include a recommendation for further action by an examiner or by the Director.
(d) Estoppel. (1) Petitioner other than in derivation proceeding. A petitioner, or the real party in interest or privy of the petitioner, is estopped in the Office from requesting or maintaining a proceeding with respect to a claim for which it has obtained a final written decision on patentability in an inter partes review, post-grant review, or a covered business method patent review, on any ground that the petitioner raised or reasonably could have raised during the trial, except that estoppel shall not apply to a petitioner, or to the real party in interest or privy of the petitioner who has settled under 35 U.S.C. 317 or 327.
(2) In a derivation, the losing party who could have properly moved for relief on an issue, but did not so move, may not take action in the Office after the judgment that is inconsistent with that party's failure to move, except that a losing party shall not be estopped with respect to any contested subject matter for which that party was awarded a favorable judgment.
(3) Patent applicant or owner. A patent applicant or owner is precluded from taking action inconsistent with the adverse judgment, including obtaining in any patent:
(i) A claim that is not patentably distinct from a finally refused or canceled claim; or
(ii) An amendment of a specification or of a drawing that was denied during the trial proceeding, but this provision does not apply to an application or patent that has a different written description.
Notes of Decisions
Regents of the Univ. of Minn. v. Lsi Corp., 926 F.3d 1327 (Fed. Cir. 2019).
· cites it 3× “37 C.F.R. § 42.73 (d)(3)(i). II. State Sovereign Immunity While admitting that both ex parte and inter partes reexamination did not implicate sovereign immunity, 16 UMN and its supporting amici contend that states enjoy immunity from IPR proceedings.”
Click-To-Call Tech., Lp v. Ingenio, Inc., 899 F.3d 1321 (Fed. Cir. 2018).
· cites it 2× “The Board rea- 9 37 C.F.R. § 42.73 (b) provides that “[a] party may request judgment against itself at any time during a proceeding.”
Choon's Design LLC v. Wecool Toys Inc. (D.N.J. 2023).
· cites it 19× “According to Defendant, once a patent owner has sought or received an adverse judgment, they are estopped, under 37 C.F.R. § 42.73 (d)(3), from taking any action inconsistent 2 In support of its motion to dismiss, Defendant references claim language from the’565 Patent, ’420…”
Softview LLC v. Apple Inc., 108 F.4th 1366 (Fed. Cir. 2024).
· cites it 5× “7,461,353 (“the ’353 patent”) invalid under the estoppel provision set forth in 37 C.F.R. § 42.73 (d)(3)(i). SoftView challenges the Board’s application of section 42.”
Softview LLC v. Apple Inc. (Fed. Cir. 2024).
· cites it 5× “7,461,353 (“the ’353 patent”) invalid under the estoppel provision set forth in 37 C.F.R. § 42.73 (d)(3)(i). SoftView challenges the Board’s application of section 42.”
Stragent, LLC v. BMW of North Am., LLC (D. Del. 2021).
· cites it 5× “73(d)(3) Does Not Alter The Outcome On The Motion Defendants contend that 37 C.F.R. § 42.73 (d)(3)"' bars Plaintiff from asserting the 036, ’790, and °477 patents because they were issued after the PTAB’s “adverse judgment” with respect to the validity of the Texas patents,…”
Genentech, Inc. v. Iancu (Fed. Cir. 2020).
· cites it 4× “The Board alternatively held that, even if good cause existed, Petitioner’s request for adverse judgment as to Ground 1 under 37 CFR § 42.73 (b) mooted the issue. No. 19-1263, J.”
Hopkins Mfg. Corp. v. Cequent Performance Prods., Inc., 223 F. Supp. 3d 1194 (D. Kan. 2016).
“On December 7, 2015, Hopkins filed a request for adverse judgment in the IPR proceedings in accordance with 37 C.F.R. § 42.73 (b)(4), and in its notice, Hopkins acknowledged that “such abandonment will lead to cancellation of the claims involved in this inter partes review.”
Cisco Sys., Inc. v. Capella Photonics, Inc. (N.D. Cal. 2020).
· cites it 2× “See 37 C.F.R. § 42.73 (d)(3) (“A 19 patent applicant or owner is precluded from taking action inconsistent with the adverse judgment, 20 including obtaining in any patent .”
Sling Tv, L.L.C. v. Realtime Adaptive Streaming (Fed. Cir. 2021).
“And Sling likewise has not identified a non- constitutional claim that newly suggests a persuasive jus- tification for granting mandamus or for providing an avail- able basis for direct-appeal jurisdiction that we did not foresee in Mylan: Sling’s challenges here, as in Mylan,…”
— 37 C.F.R. § 42.73(d)(3) — 1 case
Stragent, LLC v. BMW of North Am., LLC (D. Del. 2021).
“73(d)(3) Does Not Alter The Outcome On The Motion Defendants contend that 37 C.F.R. § 42.73 (d)(3)"' bars Plaintiff from asserting the 036, ’790, and °477 patents because they were issued after the PTAB’s “adverse judgment” with respect to the validity of the Texas patents,…”
— 37 C.F.R. § 42.73(d)(3)(i) — 1 case
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