- Ford Motor Company v. Autoconnect Holdings LLCInstitution deniedPTAB · May 12, 2026 · IPR2025-01524 · APJ John A Squires · IPR · Director review
Director Review was granted, institution was vacated, and IPR was denied because Petitioner advanced broader indefiniteness arguments in related litigation.
RulingsDirector review decision- Director reviewDirector review, grantedGranted
“As I recently explained, it is appropriate to deny institution when a Petitioner’s conduct demonstrates that the dispute “is less about a litigation alternative and more about inconsistent positions to gain an upper hand in the overall litigation.” Terumo BCT Inc. v. Haemonetics Corp., IPR2025- 01374, Paper 20 (Director May 12, 2026). Here, as in Terumo, Petitioner advanced indefiniteness contentions in the co-pending district court litigation at its first opportunity to do so after institution was granted. See Paper 15, 1–2 (listing seven allegedly indefinite terms and phrases impacting all challenged claims). Although Petitioner contends that its unpatentability arguments for the “and/or” and “one or more” claim limitations fit within the Tesla framework, i.e., that the prior art discloses the claimed features regardless of how those limitations are construed, Petitioner’s indefiniteness contentions are broader than those two limitations. See, e.g., Paper 15, 1–2; IPR2025-01383, Paper 9 at 8–10. Thus, it is appropriate to deny institution of these IPRs for the same reasons as articulated in Terumo.” slip op. at 3
- Other 314aInstitution denied discretionary otherInstitution denied
“As I recently explained, it is appropriate to deny institution when a Petitioner’s conduct demonstrates that the dispute “is less about a litigation alternative and more about inconsistent positions to gain an upper hand in the overall litigation.” Terumo BCT Inc. v. Haemonetics Corp., IPR2025- 01374, Paper 20 (Director May 12, 2026). Here, as in Terumo, Petitioner advanced indefiniteness contentions in the co-pending district court litigation at its first opportunity to do so after institution was granted. See Paper 15, 1–2 (listing seven allegedly indefinite terms and phrases impacting all challenged claims). Although Petitioner contends that its unpatentability arguments for the “and/or” and “one or more” claim limitations fit within the Tesla framework, i.e., that the prior art discloses the claimed features regardless of how those limitations are construed, Petitioner’s indefiniteness contentions are broader than those two limitations. See, e.g., Paper 15, 1–2; IPR2025-01383, Paper 9 at 8–10. Thus, it is appropriate to deny institution of these IPRs for the same reasons as articulated in Terumo. In its briefing, Petitioner states that it will stipulate to withdraw all indefiniteness arguments against the challenged patents from the related litigation if the Board agrees to maintain and not vacate institution of these IPRs. Paper 16, 2. This stipulation, which Petitioner offered only after Petitioner’s actions ran afoul of Revvo and Tesla and only after Patent Owner brought those actions to the Office’s attention, is insufficient.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied
“Accordingly, the appropriate course of action is to grant Director Review, vacate the Notices granting institution, and deny institution.3 It is: ORDERED that Director Review is granted; FURTHER ORDERED that the Notices granting institution of inter partes review (Paper 11; IPR2025-01383, Paper 12; IPR2025-01524, Paper 10) are vacated; and FURTHER ORDERED that the Petitions are denied, and no trials are instituted.” slip op. at 4
Discretionary denialPatents in suitUS 9,123,186 - Ford Motor Company v. Autoconnect Holdings LLCInstitution deniedPTAB · May 12, 2026 · IPR2025-01383 · APJ John A Squires · IPR · Director review
Director review was granted, the institution notices were vacated, and institution was denied because Petitioner advanced inconsistent claim positions in parallel litigation.
RulingsDirector review decision- Other 314aInstitution denied discretionary otherInstitution denied
“As I recently explained, it is appropriate to deny institution when a Petitioner’s conduct demonstrates that the dispute “is less about a litigation alternative and more about inconsistent positions to gain an upper hand in the overall litigation.” Terumo BCT Inc. v. Haemonetics Corp., IPR2025- 01374, Paper 20 (Director May 12, 2026). Here, as in Terumo, Petitioner advanced indefiniteness contentions in the co-pending district court litigation at its first opportunity to do so after institution was granted. See Paper 15, 1–2 (listing seven allegedly indefinite terms and phrases impacting all challenged claims). Although Petitioner contends that its unpatentability arguments for the “and/or” and “one or more” claim limitations fit within the Tesla framework, i.e., that the prior art discloses the claimed features regardless of how those limitations are construed, Petitioner’s indefiniteness contentions are broader than those two limitations. See, e.g., Paper 15, 1–2; IPR2025-01383, Paper 9 at 8–10. Thus, it is appropriate to deny institution of these IPRs for the same reasons as articulated in Terumo. In its briefing, Petitioner states that it will stipulate to withdraw all indefiniteness arguments against the challenged patents from the related litigation if the Board agrees to maintain and not vacate institution of these IPRs. Paper 16, 2. This stipulation, which Petitioner offered only after Petitioner’s actions ran afoul of Revvo and Tesla and only after Patent Owner brought those actions to the Office’s attention, is insufficient.” slip op. at 3
- Director reviewDirector review, grantedGranted
“Accordingly, the appropriate course of action is to grant Director Review, vacate the Notices granting institution, and deny institution.3 It is: ORDERED that Director Review is granted; FURTHER ORDERED that the Notices granting institution of inter partes review (Paper 11; IPR2025-01383, Paper 12; IPR2025-01524, Paper 10) are vacated; and FURTHER ORDERED that the Petitions are denied, and no trials are instituted.” slip op. at 4
Discretionary denialPatents in suitUS 9,290,153 - Ford Motor Company v. Autoconnect Holdings LLCInstitution deniedPTAB · May 12, 2026 · IPR2025-01342 · APJ John A Squires · IPR · Director review
Director Review was granted, the institution notices were vacated, and institution was denied because Ford advanced broader indefiniteness positions in related litigation.
RulingsDirector review decision- Other 314aInstitution denied discretionary otherInstitution denied
“As I recently explained, it is appropriate to deny institution when a Petitioner’s conduct demonstrates that the dispute “is less about a litigation alternative and more about inconsistent positions to gain an upper hand in the overall litigation.” Terumo BCT Inc. v. Haemonetics Corp., IPR2025- 01374, Paper 20 (Director May 12, 2026). Here, as in Terumo, Petitioner advanced indefiniteness contentions in the co-pending district court litigation at its first opportunity to do so after institution was granted. See Paper 15, 1–2 (listing seven allegedly indefinite terms and phrases impacting all challenged claims). Although Petitioner contends that its unpatentability arguments for the “and/or” and “one or more” claim limitations fit within the Tesla framework, i.e., that the prior art discloses the claimed features regardless of how those limitations are construed, Petitioner’s indefiniteness contentions are broader than those two limitations. See, e.g., Paper 15, 1–2; IPR2025-01383, Paper 9 at 8–10. Thus, it is appropriate to deny institution of these IPRs for the same reasons as articulated in Terumo. In its briefing, Petitioner states that it will stipulate to withdraw all indefiniteness arguments against the challenged patents from the related litigation if the Board agrees to maintain and not vacate institution of these IPRs. Paper 16, 2. This stipulation, which Petitioner offered only after Petitioner’s actions ran afoul of Revvo and Tesla and only after Patent Owner brought those actions to the Office’s attention, is insufficient.” slip op. at 3
- Director reviewDirector review, grantedGranted
“Accordingly, the appropriate course of action is to grant Director Review, vacate the Notices granting institution, and deny institution.3 It is: ORDERED that Director Review is granted; FURTHER ORDERED that the Notices granting institution of inter partes review (Paper 11; IPR2025-01383, Paper 12; IPR2025-01524, Paper 10) are vacated; and FURTHER ORDERED that the Petitions are denied, and no trials are instituted.” slip op. at 4
Discretionary denialPatents in suitUS 9,020,697 - Terumo BCT Inc. v. Haemonetics Corp.Institution deniedPTAB · May 12, 2026 · IPR2025-01391 · APJ John A Squires · IPR · Director review
Director Review was granted, the institution notice vacated, and institution denied because Petitioner took inconsistent claim-construction positions in the IPR and district court.
RulingsDirector review decision- Director reviewDirector review, grantedGranted
“For the reasons below, Patent Owner’s requests for Director Review are granted.” slip op. at 3
- Other 314aInstitution denied discretionary otherInstitution denied
“Petitioner’s conduct, which ensued following institution, demonstrates that this dispute is less about a litigation alternative, as Congress intended, and more about inconsistent positions to gain an upper hand in the overall litigation. See, e.g., H.R. Rep. No. 112-98, at 48 (2011) (explaining that IPRs were intended to provide “quick and cost effective alternatives to litigation”). Such conduct has negative consequences: It multiplies litigation expense, reduces patent value, discourages innovation, diminishes the integrity of the patent system, and depletes the Office’s resources. Discretion is afforded to the USPTO Director to ensure fairness, efficiency, and predictability in patent disputes in a focused inter partes context—as Congress envisioned—as distinct from the broad adversarial context in district court litigation. The Office’s review under Article I is ultimately regulatory; proceedings under Article III are adjudicatory. I would not have instituted these IPRs in the first instance had Petitioner engaged in this strategic litigation-style behavior before institution. Accordingly, the appropriate course of action is to grant Director Review, vacate the Notice granting institution of these IPRs, and deny institution.” slip op. at 4
- Strike new argumentOther
“Petitioner’s assertion that the term “controller” is not in controversy in these IPRs and so it was not required to construe the term in the Petitions is an inadequate justification for the different positions. As I have stated repeatedly, a petitioner should present a single construction and apply that construction consistently before the Board and the district court. See, e.g., Infineon Techs. Am. Corp. v. Mosaid Techs. Corp., IPR2025-01456, Paper 27 at 3–4 (Director Mar. 17, 2026) (“[A] petitioner should pick one [construction], and one consistent with its asserted District Court position.”). Failure to do so detracts from the Office’s goal of “providing greater predictability and certainty in the patent system.” Revvo, Paper 20 at 4–5. I also disagree with Petitioner’s assertion that these IPRs do not implicate Rule 42.104(b)(3). Rule 42.104(b)(3) requires a petition to “[p]rovide a statement of the precise relief requested for each claim challenged,” and to identify how each challenged claim is to be construed. The rule continues to state that “[w]here the claim to be construed contains a means-plus-function or step-plus-function limitation as permitted under 35 U.S.C. 112(f), the construction of the claim must identify the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function.” 37 C.F.R. § 42.104(b)(3). Petitioner’s position in the district court that the term “controller” is a means-plus-function limitation undercuts its position that Rule 42.104(b)(3) does not apply here. Further, Petitioner’s citation to Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) as support for its position is inapposite, as the holding in that case addresses when the Board is required to construe a claim term, not when a party is required to follow Board rules. DR Response 7–8.” slip op. at 3
Discretionary denialPatents in suitUS 10,758,652 - Carbyne, Inc. v. Tritech Software SystemsInstitution deniedPTAB · Feb 19, 2026 · IPR2025-00959 · APJ John A Squires · IPR · Director review
Director Review was granted, institution was vacated, and IPR was denied because Petitioner did not adequately explain its inconsistent claim-construction positions.
RulingsDirector review decision- Director reviewDirector review, grantedGranted
“Accordingly, it is: ORDERED that Director Review is granted; FURTHER ORDERED that the Decision granting institution of inter partes review (Paper 12) is vacated; and” slip op. at 4
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied
“taking different claim construction positions, “when a petitioner takes alternative positions before the Board and a district court, that petitioner should, at a minimum, explain why alternative positions are warranted.” Revvo, Paper 20 at 3–4 (citing Cambridge Mobile Telematics, Inc. v. Sfara, Inc., IPR2024-00952, Paper 12 at 8–9 (PTAB Dec. 13, 2024) (informative)). After considering the parties’ filings, I conclude that Petitioner fails to adequately explain why it is proposing different claim constructions before the Board and the district court.” slip op. at 3
Discretionary denial - Infineon Technologies Americas Corp. v. Mosaid Technologies Inc.Institution deniedPTAB · Feb 19, 2026 · IPR2025-01171 · APJ John A Squires · IPR · Director review
Director Review was granted, the institution decision was vacated, and institution was denied because Petitioner did not adequately explain its differing claim construction positions.
RulingsDirector review decision- Director reviewDirector review, grantedGranted
“After considering the parties’ filings, I conclude that Petitioner fails to adequately explain why it is proposing different claim constructions before the Board and the district court. The Petition offers no explanation, stating only that “no claim terms require a formal construction for purposes of addressing the grounds in this Petition.” See Pet. 4. The Petition cites to three different district court decisions construing the challenged claims but fails to address constructions from any of those decisions or provide an explanation for claim construction positions that Petitioner has taken in district court litigation that differ from those prior decisions and from the position that Petitioner takes before the Board. Id. (citing Exs. 1011, 1012, 1013). In its response to Patent Owner’s Director Review request, Petitioner argues that its different positions should be excused because it prepared its Petition without the benefit of Patent Owner’s preliminary infringement contentions. DR Response 3. I have rejected similar arguments as detracting from the Office’s goal of “providing greater predictability and certainty in the patent system,” Revvo I, Paper 20 at 4–5 (quoting Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51340, 51,342–43 (Oct. 11, 2018)), and do so here as well. Petitioner further offers certain stipulations, including that if the district court later determines that any of the challenged claims are indefinite, Petitioner will move to withdraw those claims from this proceeding. DR Response 5. I have recently rejected such a “wait and see” approach. See Revvo Techs., Inc. v. Cerebrum Sensor Techs., Inc., IPR2025- 00632, Paper 36 at 4 (Director Jan. 26, 2026). As such, the appropriate course of action is to vacate the Decision and deny institution.2” slip op. at 3
- Other 314aInstitution denied discretionary otherInstitution denied
“adequately explain why it is proposing different claim constructions before the Board and the district court. The Petition offers no explanation, stating only that “no claim terms require a formal construction for purposes of addressing the grounds in this Petition.” See Pet. 4. The Petition cites to three different district court decisions construing the challenged claims but fails to address constructions from any of those decisions or provide an explanation for claim construction positions that Petitioner has taken in district court litigation that differ from those prior decisions and from the position that Petitioner takes before the Board. Id. (citing Exs. 1011, 1012, 1013). In its response to Patent Owner’s Director Review request, Petitioner argues that its different positions should be excused because it prepared its Petition without the benefit of Patent Owner’s preliminary infringement contentions. DR Response 3. I have rejected similar arguments as detracting from the Office’s goal of “providing greater predictability and certainty in the patent system,” Revvo I, Paper 20 at 4–5 (quoting Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51340, 51,342–43 (Oct. 11, 2018)), and do so here as well. Petitioner further offers certain stipulations, including that if the district court later determines that any of the challenged claims are indefinite, Petitioner will move to withdraw those claims from this proceeding. DR Response 5. I have recently rejected such a “wait and see” approach. See Revvo Techs., Inc. v. Cerebrum Sensor Techs., Inc., IPR2025- 00632, Paper 36 at 4 (Director Jan. 26, 2026). As such, the appropriate course of action is to vacate the Decision and deny institution.2” slip op. at 3
Discretionary denialPatents in suitUS 7,051,306 - Intel Corp. / Dell Inc. et al. v. General Video, LLCInstitution deniedPTAB · Oct 17, 2025 · IPR2025-01038 · APJ Coke Morgan Stewart · IPR · Director review
The Director granted Patent Owner’s discretionary-denial request and denied the petitions under § 314(a), declining to institute IPR based on the holistic record and strong settled expectations.
RulingsDirector review decision- Settled expectationsGranted
“Other considerations, however, favor discretionary denial. In particular, the challenged patents have been in force for approximately seven, ten, and seventeen years, creating strong settled expectations for Patent Owner, and Petitioner does not provide any persuasive reasoning why an inter partes review is an appropriate use of Board resources. Dabico Airport Sols. Inc. v. AXA Power ApS, IPR2025-00408, Paper 21 at 2–3 (Director June 18, 2025); Intel Corp. v. Proxense LLC, IPR2025-00327, Paper 12, 2–3 (Director June 26, 2025). Additionally, Dell appears to have been notified of the challenged patents in 2016, 2017, and 2021. See, e.g., DD Req. 46–47; DD Reply 1–3. Accordingly, in the absence of sufficient explanation by Petitioner, Patent Owner’s strong settled expectations tip the balance in favor of discretionary denial.” slip op. at 3
- Other 314aInstitution denied settled expectationsInstitution denied discretionary otherInstitution denied
“particular, the challenged patents have been in force for approximately seven, ten, and seventeen years, creating strong settled expectations for Patent Owner, and Petitioner does not provide any persuasive reasoning why an inter partes review is an appropriate use of Board resources. Dabico Airport Sols. Inc. v. AXA Power ApS, IPR2025-00408, Paper 21 at 2–3 (Director June 18, 2025); Intel Corp. v. Proxense LLC, IPR2025-00327, Paper 12, 2–3 (Director June 26, 2025). Additionally, Dell appears to have been notified of the challenged patents in 2016, 2017, and 2021. See, e.g., DD Req. 46–47; DD Reply 1–3. Accordingly, in the absence of sufficient explanation by Petitioner, Patent Owner’s strong settled expectations tip the balance in favor of discretionary denial. Although certain arguments are highlighted above, the determination to exercise discretion to deny institution is based on a holistic assessment of all of the evidence and arguments presented. Accordingly, the Petitions are denied under 35 U.S.C. § 314(a).” slip op. at 3
Discretionary denialPatents in suitUS 7,359,437 - Hisense USA Corporation / Hisense Electronica Mexico S.A. De C.V. v. Videolabs, Inc.Institution deniedPTAB · Oct 10, 2025 · IPR2025-00882 · APJ Coke Morgan Stewart · IPR · Director review
The Director granted Patent Owner’s discretionary-denial request and denied the petitions under § 314(a), declining to institute IPR based on a holistic assessment that included settled expectations.
RulingsDirector review decision- Settled expectationsInstitution denied settled expectationsGranted
“Other considerations, however, favor discretionary denial. In particular, the challenged patents have been in force for twelve and eleven years, creating settled expectations for Patent Owner. DD Req. 1, 7–8. Patent Owner also provides evidence that the challenged patents have been licensed to over twenty companies. Id. at 4; Ex. 2002. In addition, Patent Owner provides evidence that it has been in contact with Petitioner since December 2022, when Patent Owner sent Petitioner a notice letter regarding Patent Owner’s patent portfolio. DD Req. 4–5, 9; Ex. 2004. Patent Owner 1 Citations are to papers in IPR2025-00880. The parties filed similar papers in IPR2025-00881, IPR2025-00882, and IPR2025-00883. specifically notified Petitioner about the challenged patents in June 2023, when Patent Owner provided Petitioner with a claim chart during licensing negotiations. DD Req. 9. Petitioner’s arguments regarding Patent Owner’s settled expectations are not persuasive, and Petitioner does not otherwise provide persuasive reasoning why an inter partes review is an appropriate use of Board resources. Dabico Airport Sols. Inc. v. AXA Power ApS, IPR2025-00408, Paper 21 at 2–3 (Director June 18, 2025).” slip op. at 2
- Other 314aInstitution denied discretionary otherInstitution denied
“Although certain arguments are highlighted above, the determination to exercise discretion to deny institution is based on a holistic assessment of all of the evidence and arguments presented. Accordingly, the Petitions are denied under 35 U.S.C. § 314(a). In consideration of the foregoing, it is: ORDERED that Patent Owner’s request for discretionary denial is granted; and FURTHER ORDERED that the Petitions are denied, and no trial is instituted.” slip op. at 3
Discretionary denialPatents in suitUS 8,291,236 - Oneplus Technology (Shenzhen) Co., Ltd. v. Pantech CorporationInstitution deniedPTAB · Oct 3, 2025 · IPR2025-00888 · APJ Coke Morgan Stewart · IPR · Director review
The Director granted Patent Owner’s discretionary-denial requests and denied institution in IPR2025-00888 based on settled expectations and the totality of the evidence and arguments.
RulingsDirector review decision- Settled expectationsInstitution denied settled expectationsGranted
“The patents challenged in IPR2025-00720, IPR2025-00887, and IPR2025-00888 present different circumstances and are unrelated to the patent challenged in IPR2025-00756. In particular, the challenged patents have been in force for eight, ten, and nine years, respectively, creating strong settled expectations for Patent Owner, and Petitioner does not provide 1 Citations are to papers in IPR2025-00720. The parties filed similar papers in IPR2025-00756, IPR2025-00887, and IPR2025-00888. persuasive reasoning why an inter partes review is an appropriate use of Board resources. Dabico Airport Sols. Inc. v. AXA Power ApS, IPR2025- 00408, Paper 21 at 2–3 (Director June 18, 2025). In the absence of any such information, the Office is disinclined to disturb the strong settled expectations of Patent Owner.” slip op. at 2
- Other 314aInstitution denied discretionary otherInstitution denied
“Although certain arguments are highlighted above, the determinations in this Decision are based on a holistic assessment of all of the evidence and arguments presented. Accordingly, the Petitions in IPR2025-00720, IPR2025-00887, and IPR2025-00888 are denied under 35 U.S.C. § 314(a), and the Petition in IPR2025-00756 is referred to the Board to handle the case in the normal course, including by issuing a decision on institution addressing the merits and other non-discretionary considerations, as appropriate.” slip op. at 3
Discretionary denialPatents in suitUS 9,369,251 - L’Oreal USA, Inc. v. Brightex Bio-Photonics, LLCInstitution deniedPTAB · Sep 26, 2025 · IPR2025-00971 · APJ Coke Morgan Stewart · IPR · Director review
The Director granted Patent Owner’s discretionary-denial request and denied institution under § 314(a), citing settled expectations and the parties’ long technology partnership.
RulingsDirector review decision- Settled expectationsGranted
“Other considerations, however, favor discretionary denial. In particular, the challenged patent has been in force for eight years, creating settled expectations for Patent Owner. DD Req. 19. Additionally, it is uncontested that the parties were technology partners for many years and developed products together. Id. at 1–3, 20. Patent Owner provides evidence demonstrating that it informed Petitioner of the filing of the provisional application that led to the challenged patent in 2013, the publication of the non-provisional application in 2014, and the issuance of the challenged patent in 2017. Id. at 1–2, 5; Ex. 2015 ¶¶ 6–7. Patent Owner also sent a letter to Petitioner in 2022 identifying the challenged patent as relevant to Petitioner’s products. Ex. 1022. Accordingly, Petitioner appears to have had notice of the challenged patent for a significant period of time. Under these circumstances, the considerations that favor discretionary denial outweigh those that counsel against it.” slip op. at 2
- Other 314aInstitution denied discretionary otherInstitution denied
“Although certain arguments are highlighted above, the determination to exercise discretion to deny institution is based on a holistic assessment of all of the evidence and arguments presented. Accordingly, the Petition is denied under 35 U.S.C. § 314(a).” slip op. at 3
Discretionary denialPatents in suitUS 9,542,595
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.