- Intel Corporation / Lenovo (United States) Inc. et al. v. Collision Communications, Inc.Institution deniedPTAB · May 28, 2025 · IPR2025-00301 · APJ Bart A Gerstenblith · IPR · Institution
The Board denied institution of review for claims 1–11, 16, and 21 under § 314(a), finding the Fintiv factors favored discretionary denial, and denied joinder.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“2026. This date is nearly five months prior to the date on which the final written decision would be due if trial were instituted in this proceeding. And, even if we assume Petitioner’s alleged February–March 2026 trial date, this date too is several months prior to the projected final written decision deadline. As such, it is unlikely that a final written decision in this proceeding would issue before trial in the district court, unless the trial was delayed or rescheduled for a later time. Thus, we find this factor weighs in favor of exercising our discretion to deny institution. See ARM Ltd. v. Daedalus Prime LLC, IPR2025-00207, Paper 10 at 2 (May 16, 2025) (Before the Office of the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office) (exercising discretion to deny institution with the same relative timing between district court trial and final written decision deadline).” slip op. at 13
- PTAB / AIA Trials › Motions to amend / substitute claimsNot reached
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied
“presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Institution of inter partes review, however, is discretionary. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.”). For the reasons discussed below, we exercise discretion pursuant to 35 U.S.C. § 314(a) not to institute inter partes review. Additionally, for the same reasons and because institution was denied in IPR2024-01248, we deny Petitioner’s Motion for Joinder. See 35 U.S.C. § 315(c) (“[T]he Director . . . may join as a party . . . any person who properly files a petition under section 311 that the Director . . . determines warrants the institution of an inter partes review under section 314.”).” slip op. at 3
Discretionary denialPatents in suitUS 9,814,071 - Baker Hughes Oilfield Operations, Inc. v. Smith International, Inc.Institution deniedPTAB · Dec 22, 2016 · IPR2016-01451 · APJ Bart A Gerstenblith · IPR · Institution
The Board denied institution: it exercised discretion as to claims 43–46, 49, 50, 62–69, and 72, and found no reasonable likelihood of obviousness for claims 55–58.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“determining whether to institute or order a proceeding under this chapter . . . the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” In light of § 325(d), we consider whether the reexamination contains the same or substantially the same art or arguments as presented in the Petition. Patent Owner argues that we should decline to institute inter partes review under 35 U.S.C. § 325(d) because the Petition raises the same or substantially the same prior art or arguments that were presented previously to the Office. Prelim. Resp. 19–26. In particular, Patent Owner contends that each of the claims in the reexamination was rejected based on Eddison, under either 35 U.S.C. § 102(b) and/or in combination with Jewkes under § 103(a), and that Petitioner relies upon Jewkes again under § 102(b) in its Petition. Id. at 23–26. Petitioner makes no attempt to explain why the references that form the bases for Petitioner’s challenge here are not the same or substantially similar prior art to that presented during the reexamination or why the arguments are not the same or substantially similar to those presented previously to the Office. Eddison and Jewkes were relied upon in the reexamination. See id. at 141–60 (Office Action (mailed Aug. 25, 2014)). Additionally, Tandberg was presented to the Office in conjunction with the original prosecution of the ’817 patent. See Ex. 2003; Prelim. Resp. 28.” slip op. at 9
- Other 314aInstitution denied discretionary otherInstitution denied
“Patent Owner makes a valid point. Section 1.530(k) of Title 37 of the Code of Federal Regulations provides: “Amendments not effective until certificate. Although the Office actions will treat proposed amendments as though they have been entered, the proposed amendments will not be effective until the reexamination certificate is issued and published.” This places us in a difficult position. If Patent Owner ultimately succeeds in the appeal of the reexamination, a certificate will issue and the amendments to claim 43 and its dependents will be “effective.” See id.; see Ex. 1007, 166 (showing the amendments to claim 43). Yet Petitioner provides no analysis of the amended limitations of claim 43. See, e.g., Pet. 16. Alternatively, if Patent Owner is unsuccessful in its appeal to the Federal Circuit, claim 43 and its dependents, as challenged in the reexamination, will be declared unpatentable. In either circumstance, any review we undertake of the unamended version of claim 43, and the claims depending therefrom, will be for naught. Accordingly, in light of the above circumstances, reviewing these claims on the record presented would waste judicial resources as well as the resources of the parties.” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We agree with Patent Owner that Petitioner has not articulated a clear reason as to why one of ordinary skill in the art would have modified Jewkes’s drilling assembly to include the additional structures taught by Tandberg and Eddison. We recognize that Petitioner points to Tandberg’s teaching that employing the same fundamental structure as an underreamer and as a stabilizer has an advantage, but Petitioner never explains what that advantage is or why it would have prompted one of ordinary skill in the art to modify Jewkes.5 Accordingly, on the record before us, Petitioner has not established a reasonable likelihood that it would prevail in showing that the combination of Jewkes, Tandberg, and Eddison would have rendered the subject matter of claims 55–58 obvious to one of ordinary skill in the art at the time of the invention.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not found
“We agree with Patent Owner that Petitioner has not articulated a clear reason as to why one of ordinary skill in the art would have modified Jewkes’s drilling assembly to include the additional structures taught by Tandberg and Eddison. We recognize that Petitioner points to Tandberg’s teaching that employing the same fundamental structure as an underreamer and as a stabilizer has an advantage, but Petitioner never explains what that advantage is or why it would have prompted one of ordinary skill in the art to modify Jewkes.5 Accordingly, on the record before us, Petitioner has not established a reasonable likelihood that it would prevail in showing that the combination of Jewkes, Tandberg, and Eddison would have rendered the subject matter of claims 55–58 obvious to one of ordinary skill in the art at the time of the invention.” slip op. at 12
§ 103 obviousnessDiscretionary denialPatents in suitUS 6,732,817
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.