• Fujirebio Diagnostics, Inc. v. Quanterix Corp.Institution denied
  PTAB · Oct 17, 2025 · IPR2025-01060 · APJ Coke Morgan Stewart · IPR · Director review

  The Director granted Quanterix’s request for discretionary denial and denied institution of IPR based on the examiner’s consideration of copying evidence and the holistic assessment.

  RulingsDirector review decision

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied

    “is appropriate because the patent examiner found that the objective indicia of nonobviousness evidence was persuasive in allowing the patent application. DD Req. 13–30. Although Petitioner addresses the sufficiency of Patent Owner’s evidence, Petitioner has not persuasively demonstrated that the Office erred in evaluating this evidence. DD Opp. 21; Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). Rather, Petitioner merely disagrees with the Examiner’s treatment of the evidence without showing material error. DD Opp. 21–26. “If reasonable minds can disagree regarding the purported treatment of the art or arguments, it cannot be said that the Office erred in a manner material to patentability.” See Advanced Bionics, Paper 6 at 9. Under these circumstances, discretionary denial is appropriate.” slip op. at 2

  • Other 314aInstitution denied discretionary otherInstitution denied

    “Furthermore, to the extent resolution of this issue may require additional evidence regarding objective indicia of nonobviousness, a district court may be the more appropriate venue, as it may allow for more robust discovery. Accordingly, the considerations that favor discretionary denial outweigh those that counsel against it. 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

  • Obviousness (§103) › Objective indicia / secondary considerations › CopyingObjective indicia with nexusDecided for patent owner

    “particular, in allowing the challenged patent, the patent examiner stated that Patent Owner provided rebuttal evidence of copying by others sufficient to overcome the obviousness rejection. Ex. 1002, 659–660. The patent examiner explained that “no group prior to the effective filing date had done more than perhaps suggest” using the claimed assay, “while dozens of groups utilized” that assay “after the date of Applicant’s contribution.” Id. at 660. Patent Owner argues that discretionary denial under 35 U.S.C. 325(d) is appropriate because the patent examiner found that the objective indicia of nonobviousness evidence was persuasive in allowing the patent application. DD Req. 13–30. Although Petitioner addresses the sufficiency of Patent Owner’s evidence, Petitioner has not persuasively demonstrated that the Office erred in evaluating this evidence. DD Opp. 21; Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). Rather, Petitioner merely disagrees with the Examiner’s treatment of the evidence without showing material error. DD Opp. 21–26. “If reasonable minds can disagree regarding the purported treatment of the art or arguments, it cannot be said that the Office erred in a manner material to patentability.” See Advanced Bionics, Paper 6 at 9. Under these circumstances, discretionary denial is appropriate.” slip op. at 2

  § 103 obviousnessDiscretionary denial
  Patents in suitUS 11,275,092
• Skechers U.S.A., Inc. v. Nike, Inc.Institution denied
  PTAB · Jun 10, 2025 · IPR2025-00141 · APJ Ken B Barrett · IPR · Institution

  The Board denied institution on all challenged claims under §325(d), finding the petition relied on previously presented art and did not show material error by the Office.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied

    “The Board uses a two-part framework in determining whether to exercise its discretion under § 325(d), specifically: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, Paper 6 at 8.” slip op. at 11

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “single §102 rejection based solely on Nishida.” Pet. § 325(d) Reply 3 (emphasis omitted). Specifically, Petitioner argues that: The examiner seemingly failed to consider how it would have been obvious to combine Nishida (or any other reference of record, such as Orei) with knowledge in the art, including the fact that it was “well known to use double needle-bar raschel machines . . . to knit textile elements simultaneously with surrounding textile structures” (Pet., 37–38), and that simultaneous knitting would be obvious because it would “increase yield and reduce manufacturing steps,” as explained in the Petition and supporting evidence. See Pet., 42–44. Id. (alterations in original); see also id. at 4 (Petitioner arguing that the Examiner clearly erred for “failing to seemingly even consider if it would 10 We quote here, to give context to “otherwise,” both aspects that a petitioner must demonstrate in order to meet its burden. In order to determine whether Petitioner has met its overall burden, we need not and do not reach the issue of whether “the previously presented art [Nishida] teaches the limitations of the challenged claims.” Ecto World, Paper 13 at 6. have been obvious to combine Nishida with other prior art, or to implement Nishida using well-known techniques for simultaneously knitting textile elements and surrounding structures having differing textures.”). We do not find this argument persuasive. The cited portion of the Petition is the contention that Orei—not Nishida—would render obvious claim 1. See Pet. 37–38, 42–44 (Ground 1A). Thus, Petitioner has not shown persuasively that the Examiner erred in not making an obviousness rejection based on Nishida because the disputed limitation was purportedly well-known. Additionally, Petitioner’s support for the assertion that this limitation is well-known is not persuasive. The Petition parenthetically quotes from a source stating that plural “articles . . . can be simultaneously knitted side-by-side,” not that an article (a textile element) and surrounding textile structure are known to be simultaneously knitted. See Pet. 38 (quoting Ex. 1050, 201) (emphasis added); see also Pet. § 325(d) Reply 3 (Petitioner quoting its own argument and characterizing it as a “fact” (“The examiner seemingly failed to consider . . . the fact that it was ‘well known . . . “)).” slip op. at 21

  § 103 obviousnessDiscretionary denial
  Patents in suitUS 8,266,749
• Digital Global Systems, Inc. v. Deepsig Inc.Institution denied
  PTAB · May 28, 2025 · IPR2025-00194 · APJ Robert J Weinschenk · IPR · Institution

  The Board denied institution under § 314(a), finding no reasonable likelihood for the remaining claims except claim 13, whose potential success did not justify instituting trial.

  RulingsInstitution decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “had “a bachelor’s degree in electrical engineering, computer engineering, or equivalent and at least two years of experience working with radio communication systems and machine learning.” Pet. 3 (citing Ex. 1003 ¶¶ 33–34). Petitioner’s description of the level of ordinary skill in the art is supported by the testimony of Petitioner’s declarant, Dr. Zhi Ding. Ex. 1003 ¶¶ 33–34. Patent Owner does not dispute Petitioner’s description at this stage of the proceeding. We adopt Petitioner’s description for the purposes of this Decision.” slip op. at 4

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “the same standard used in a civil action under 35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of the claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b). Neither party proposes an express construction for any claim terms. Pet. 13; Prelim. Resp. 16. We determine that no claim terms require express construction for purposes of this Decision.” slip op. at 5

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “reasonable likelihood of prevailing in showing that claims 4–6, 12, 14, and 16–22 would have been obvious over Jüschke and Holt. Petitioner may satisfy its burden for claim 13, but, as discussed below, that would not impact our decision to exercise our discretion under § 314(a) to deny institution. See Section II.F.” slip op. at 16

  • Other 314aInstitution denied discretionary otherInstitution denied

    “inter partes review. SAS Inst. v. Iancu, 584 U.S. 357, 366 (2018). Specifically, “[i]f a panel determines that a petition meets the standards for institution in relation to fewer than all the challenges presented, . . . the panel will evaluate all the challenges and determine whether, in the interests of efficient administration of the Office and integrity of the patent system, the entire petition should be denied.” See Consolidated Trial Practice Guide, 64 (Nov. 2019), available at https://www.uspto.gov/sites/default/files/ documents/tpgnov.pdf. Here, thirteen challenged claims remain after Patent Owner’s statutory disclaimer. Petitioner at most demonstrates a reasonable likelihood of prevailing for one dependent claim, which has no claims depending therefrom. See Sections II.C–II.E. Thus, based on the particular facts of this case, we find that instituting trial would not be an efficient use of the Board’s time and resources, and we exercise our discretion to deny institution under § 314(a). See Deeper, UAB v. Vexilar, Inc., IPR2018- 01310, Paper 7 at 41–43 (PTAB Jan. 24, 2019) (informative); Chevron Oronite Co. LLC v. Infineum USA L.P., IPR2018-00923, Paper 9 at 10–11 (PTAB Nov. 7, 2018) (informative).” slip op. at 16

  Claim construction§ 103 obviousnessDiscretionary denial
  Patents in suitUS 11,777,540
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. KP Innovations 2, LLCInstitution denied
  PTAB · May 12, 2025 · IPR2025-00101 · APJ Jameson Lee · IPR · Institution

  The Board denied institution of review of claims 18–21, finding no reasonable likelihood on three grounds and declining institution in view of the limited potential reach of the remaining ground.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “Regarding the alleged anticipation by Okaya, Petitioner has not adequately shown that Okaya discloses that the audio and video outputs of carousel 10 connect to a communication network without the intervening use of a computer or video conferencing system to which the carousel is connected. Okaya specifically describes that “the multimedia carousel 10 includes several input and output terminals for integrating with a multimedia computer or video conferencing system.” Ex. 1006, 3:1–4. The specific scenario described in Okaya, in column 3, lines 43 to 61, also has carousel 10 connected to a notebook PC. Thus, Petitioner’s arguments based on carousel 10 itself as the device of limitation [18a] is inadequate. See also” slip op. at 13

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “For reasons discussed below, we find Petitioner’s reasoning to be insufficient for one of ordinary skill in the art to add two cameras to Nagasawa’s case body 1, one on each side of case body 1. Petitioner does not adequately address the issue of sufficient spacing on Nagasawa’s case body 1, which includes two back-to-back mounted displays 4 and 8 (Figure 1A), to include two additional cameras, one facing inward and the other facing outward, particularly as one side of case body 1 is used for gaming (Fig. 1B, Ex. 1007, 3:53–65). In Nagasawa’s fifth embodiment, which includes a camera for video conferencing, the camera is placed in the hinge connecting case bodies 1 and 2, and not within case body 1. That is an indication that there is not enough room in Nagasawa’s case body 1 to incorporate a camera, much less two cameras as Petitioner has proposed to meet limitations [18c] and [18d]. Nagasawa’s Figure 12B is reproduced below: Figure 12B is a front view of a fifth embodiment of Nagasawa’s foldable phone in the unfolded position. Ex. 1007, 3:24–26. Nagasawa describes: “Video conference display may be provided where the photo sticker 51 is to be affixed in order to provide folding portable apparatus equipped with a small-sized TV camera 53 at the hinge.” Id. at 7:36–39. Nagasawa’s design already dictates where a camera would be mounted, and omits discussion of any other locations of that camera, much less a placement of it on the phone case body. Id.” slip op. at 23

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “Additionally, Dr. Theogarajan testifies: “A person using [Nagasawa’s] pocket game would cover any camera placed on the outer surface of the first case body. Any camera placed in such a position would be abused with dirt and oil from a game player’s hand.” Ex. 2001 ¶ 145. We credit the testimony. It further undermines Petitioner’s proposed addition of two cameras to Nagasawa’s case body 1. Also, Nagasawa’s fifth embodiment already includes a video conferencing camera facing the user, mounted in the hinge connecting case bodies 1 and 2. In light of that teaching, there is little reason to add a camera to the inward facing side of Nagasawa’s case body 1.” slip op. at 24

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “Petitioner asserts: “[T]he Board need not construe any term because the prior art invalidates the claims under any plausible construction.” Pet. 12. Petitioner has not proposed an express construction for any claim term. Patent Owner asserts that “[t]he term ‘receive and transmit information’ [in claim 18] means real-time or near real-time audio and visual information.” Prelim. Resp. 15–16. Patent Owner further argues that “Petitioner accepts Patent Owner’s construction because the construction is a plausible construction, and Petitioner stated that they believe their art invalidates the claims under any plausible constructions.” Id. at 16. For purposes of this Decision, however, we need not decide whether to adopt Patent Owner’s proposed construction. C.” slip op. at 8

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips
  Patents in suitUS 10,499,168
• Lenovo (United States) Inc. / Dell Inc. et al. v. Universal Connectivity Technologies, Inc.Institution denied
  PTAB · Apr 17, 2025 · IPR2024-01482 · APJ Thomas L Giannetti · IPR · Institution

  The Board denied institution on claims 1, 2, 4, 8–10, 12, 13, 15, 18–20, and 25, exercising § 314(a) discretion after balancing the Fintiv factors and finding the merits not particularly strong.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied

    “partes review “allays concerns about inefficiency and duplication of efforts,” and strongly weighs against exercising our authority to deny institution. Fintiv, Paper 11 at 6. Of the three district court proceedings, the Lenovo Group case, pending in the Eastern District of Texas, is the most significant to our analysis here. In the Lenovo Group case, Lenovo Group has not requested a stay. Prelim. Resp. 16. Patent Owner argues that the Lenovo Group case is not likely to be stayed based on that court’s low grant rate in other cases and the progress of that case in particular. Id. at 17. The district court in the HP case denied a stay without prejudice and stated that a stay could be reconsidered in the future depending on the outcome at the PTAB. Prelim. Reply 3. The Dell case has been stayed. Id. On this record, we decline to speculate as to how any of the involved district courts where no stay is pending might rule on any future motion to stay. Thus, we determine that, while one stay has been granted, the lack of a stay in the other underlying district court cases, especially the Lenovo Group case, is not sufficiently persuasive to weigh this factor against exercising discretion. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 15 at 12 (PTAB May 13, 2020) (informative), cautions against speculating whether the district court would grant a stay if one were requested. Therefore, this factor has a neutral effect on the overall balancing of the Fintiv factors. B. Proximity of Trial Date to Projected Statutory Deadline (Factor 2) The scheduled trial date for the Lenovo Group case is November 3, 2025, which is about six months prior to the expected date for the final written decision here (i.e., late April 2026). See Prelim. Resp. 20; IPR2024- 01429, Ex. 2002 (Lenovo Group case Docket Control Order), 1. Petitioner argues this trial date is uncertain. Prelim. Reply 3. Further, Petitioner focuses its argument on what it terms a “growing backlog” in the Eastern District of Texas and “associated scheduling uncertainty.” Id. at 4. Petitioner refers to the status of the HP case, which is currently set for trial on September 21, 2026, and the stay in the Dell case. Id. Patent Owner responds that “[b]oth the scheduled trial date and the date of trial [in the Lenovo Group case] based on median time-to-trial statistics occur months before a final written decision would be expected here.” Prelim. Sur-reply 4. Patent Owner asserts that the time-to-trial statistics for the Eastern District of Texas project a median time-to-trial of 21.9 months. Prelim. Resp. 20–21 (citing Ex. 2007, U.S. District Courts Federal Court Management Statistics–Profiles—September 30, 2024). This projection yields a trial date that is prior to the expected final written decision date of April 2026. Prelim. Sur-reply 4. As with the previous factor, the status of the Lenovo Group case is our focus here. As stated, that trial is set to occur about six months before a final written decision would issue in this proceeding. The district court has stated that this trial date setting “cannot be changed without an acceptable showing of good cause.” Prelim. Resp. 20. We are not persuaded by Petitioner’s unsupported argument that the trial date is uncertain. We also consider the fact that the median time-to-trial statistic discussed by both parties projects a trial date earlier than the actual date set by the district court. Ex. 2007; Prelim. Sur-reply 1. The fact that the time-to-trial statistic is earlier than the trial date set in the Lenovo Group case confirms that the schedule set by the district court is credible and should be given weight. From this evidence, we are persuaded that we should rely on the trial” slip op. at 9

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “E. Conclusion Regarding the Merits Petitioner does not present particularly strong merits. Petitioner’s arguments on the “bus limitation,” to succeed at trial, would require addressing a claim construction issue that was never addressed in the Petition and is arguably contradicted by the ’520 patent, which discloses transmitting packets representing a plurality of different control signals on a single bus. See Prelim. Sur-reply 2 (citing Ex. 1001, 7:34–38, 9:23–25, 9:50–54). Similarly, prevailing on the “modified protocol” issue would require proving that the HDMI–C protocol, which uses the same separate channel arrangement for CEC and DDC as standard HDMI, is sufficiently “modified” to meet the claim. Taking into account Patent Owner’s persuasive arguments supra in response, and for the reasons given, we do not find the merits of Petitioner’s position on either of these dispositive issues to be particularly strong.” slip op. at 20

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “and only to the extent necessary to resolve the issues in dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Neither party proposes claim constructions for our consideration. Petitioner submits that it “for the purposes of this proceeding, the terms of the challenged claims should be given their plain and ordinary meaning, and no terms require specific construction.” Pet. 8. Patent Owner does not dispute Petitioner’s position that no terms require construction. Prelim. Resp. 11–12. We determine there are no claim terms that need to be expressly construed for this Decision.” slip op. at 15

  • Skill levelDecided for patent owner

    “Patent Owner states that a person of ordinary skill “would have the equivalent of a bachelor’s degree in electrical engineering, computer engineering, computer science, or equivalent training and three years of work experience with data communications systems or interfaces, including at least some experience with serial or display data communications systems or interfaces .” Prelim. Resp. 12. The differences between these nearly-identical definitions are minor and immaterial to our decision. We regard either description as consistent with the challenged patent and the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill).” slip op. at 16

  Claim construction§ 103 obviousnessDiscretionary denial
  Patents in suitUS 7,856,520
• Par-Kan Company, LLC v. Unverferth Manufacturing CompanyInstitution denied
  PTAB · Mar 19, 2025 · IPR2024-01427 · APJ Meredith C Petravick · IPR · Institution

  The Board denied institution on claims 10–21, finding no reasonable likelihood that claims 10–20 were unpatentable and declining institution based at most on claim 21.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied

    “1. Legal Standards A patent owner may antedate a reference by proving an earlier 4 Assembly Manual: Part Number 80504785 REV A, Hiniker Company, Jan. 2001 (“Hiniker Manual”) (Ex. 1007). 5 Screen capture of the archived version of a Hiniker Company webpage captured by the Internet Archive on March 14, 2006, available at https://web.archive.org/web/20060314112127/http://www.hiniker. com/ag_products/4800features.htm (“Hiniker Webpage”) (Ex. 1008). 237 F.3d 1359, 1365 (Fed. Cir. 2001); see 37 C.F.R. § 1.131. For an actual reduction to practice, a patent owner must show three things: (1) construction of an embodiment or performance of a process meeting all limitations in the challenged claims; (2) “that the invention would work for its intended purpose”; and (3) “sufficient evidence to corroborate inventor testimony regarding these events.” Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1169 (Fed. Cir. 2006). If a patent owner attempts to antedate a reference in an inter partes review, the patent owner bears the burden of producing evidence supporting an invention date before the reference’s effective date. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1379–80 (Fed. Cir. 2015). At the institution stage of an inter partes review, the statutory “reasonable likelihood” standard for institution applies to the issue whether a reference qualifies as prior art. Cf. Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 12 (precedential) (citing 35 U.S.C. § 314(a)).” slip op. at 6

  • Other 314aInstitution denied discretionary otherInstitution denied

    “contend that Morris and Hiniker Webpage are not available as prior art with regard of claim 21 because Patent Owner does not contend the invention of claim 21 was actually reduced to practice prior to the alleged publication dates of Morris and Hiniker Webpage. Nevertheless, even assuming a reasonable likelihood of prevailing was shown by Petitioner with respect to claim 21, we still consider whether we should exercise discretion to deny the Petition. That is because when a petitioner demonstrates a reasonable likelihood of prevailing with respect to one or more claims institution of review remains discretionary. SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1356 (2018) (“[Section] 314(a) invests the Director with discretion on the question whether to institute review . . . .” (emphasis omitted)); 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.”). The Board may consider the number of claims and grounds that meet the reasonable likelihood standard when deciding whether to institute inter partes review under 35 U.S.C. § 314(a). See Chevron Oronite Co. v. Infineum USA L.P., IPR2018-00923, Paper 9 at 10–11 (PTAB Nov. 7, 2018) (informative); Deeper, UAB v. Vexilar, Inc., IPR2018-01310, Paper 7 at” slip op. at 14

  • BurdenDecided for patent owner

    “3500 persuaded us that Petitioner, as explained below, has not produced sufficient evidence to show a reasonable likelihood in refuting that the subject matter of claims 10–20 was actually reduced to practice (i) before February 15, 2006; (ii) no later than February 18, 2006; (iii) no later than February 28, 2006; and (iv) no later than May 16, 2006. Accordingly, Patent Owner persuaded us that Petitioner has not shown a reasonable likelihood in establishing that either Morris, which published by August 13, 2006, or Hiniker Webpage, which published by March 14, 2006, are prior art to claims 10–20 of the ’123 patent.” slip op. at 11

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached

    “4. Conclusion Petitioner’s grounds all rely upon either Morris (Ex. 1004) or Hinkier Webpage (Ex. 1008) with respect to claims 10–20 of the ’123 patent. Pet. 1. establishing that either Morris or Hiniker Webpage are prior art to claims 10–20, we determine that Petitioner fails to show a reasonable likelihood that claims 10–20 are unpatentable.” slip op. at 13

  § 103 obviousnessDiscretionary denial
  Patents in suitUS 9,745,123
• Par-Kan Company, LLC v. Unverferth Manufacturing CompanyInstitution denied
  PTAB · Mar 19, 2025 · IPR2024-01426 · APJ Meredith C Petravick · IPR · Institution

  The Board denied institution on all asserted grounds because Petitioner did not show Morris or the Hiniker Webpage was prior art for claims 16–22, and declined institution for claim 23 in view of efficiency.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “partes review, the patent owner bears the burden of producing evidence supporting an invention date before the reference’s effective date. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1379–80 (Fed. Cir. 2015). At the institution stage of an inter partes review, the statutory “reasonable likelihood” standard for institution applies to the issue whether a reference qualifies as prior art. Cf. Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 12 (precedential) (citing 35 U.S.C. § 314(a)).” slip op. at 7

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference not prior artDecided for patent owner

    “partes review, the patent owner bears the burden of producing evidence supporting an invention date before the reference’s effective date. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1379–80 (Fed. Cir. 2015). At the institution stage of an inter partes review, the statutory “reasonable likelihood” standard for institution applies to the issue whether a reference qualifies as prior art. Cf. Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 12 (precedential) (citing 35 U.S.C. § 314(a)).” slip op. at 7

  • Other 314aInstitution denied discretionary otherInstitution denied

    “The Board may consider the number of claims and grounds that meet the reasonable likelihood standard when deciding whether to institute inter partes review under 35 U.S.C. § 314(a). See Chevron Oronite Co. v. Infineum USA L.P., IPR2018-00923, Paper 9 at 10–11 (PTAB Nov. 7, 2018) (informative); Deeper, UAB v. Vexilar, Inc., IPR2018-01310, Paper 7 at” slip op. at 14

  § 102 anticipationDiscretionary denial
  Patents in suitUS 8,967,940
• Reed Semiconductor Corp. v. Monolithic Power Systems, Inc.Institution denied
  PTAB · Nov 26, 2024 · IPR2024-00871 · APJ Ken B Barrett · IPR · Institution

  The Board denied institution because Petitioner failed to show a reasonable likelihood of prevailing on any challenged claim; it also found institution inefficient based on Ground 1 alone.

  RulingsInstitution decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We discern no material difference between the parties’ definitions. Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art. We note, however, that were we to adopt Patent Owner’s assessment, the outcome of this Decision would be the same.” slip op. at 12

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “On this record and for purposes of this decision, we determine that no claim terms require express construction. D. The Alleged Unpatentability of Claims 1, 11, and 12 as Anticipated by TI,” slip op. at 13

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “establishing the unpatentability of any of the challenged claims of the ’608 patent. IV. ORDER For the foregoing reasons, it is ORDERED that the Petition is denied and no trial is instituted.” slip op. at 39

  • PTAB / AIA Trials › Discretionary denialInstitution denied discretionary otherInstitution denied

    “Here, Petitioner advances five challenges with four directed to the same three independent claims. Pet. 3. We, for the reasons discussed below, determine that Petitioner has failed to show a reasonable likelihood of prevailing on Grounds 2 through 5. We further determine that, based on the particular facts of this proceeding, instituting a trial with respect to all grounds and all the challenged claims based on evidence and arguments directed only to Ground 1 would not be an efficient use of the Board’s time and resources. Cf. Chevron Oronite Co. LLC v. Infineum USA L.P., IPR2018-00923, Paper 9, 10–11 (PTAB Nov. 7, 2018) (informative); Deeper, UAB v. Vexilar, Inc., IPR2018-01310, Paper 7 (PTAB Jan. 24, 2019) (informative). Thus, even if Petitioner met the requisite burden for institution as to Ground 1, we would exercise our discretion and not institute an inter partes review. E. The Alleged Anticipation of Claims 1, 11, and 12 by Galinski (Ground 2)” slip op. at 24

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 9,590,608
• Comcast Cable Communications, LLC v. Touchstream Technologies, Inc.Institution denied
  PTAB · Jul 24, 2024 · IPR2024-00323 · APJ Michelle N Wormmeester · IPR · Institution

  The Board denied institution of review of claims 1–20, finding the Fintiv factors favored denial and the petition lacked compelling merits; it also denied based on multiple petitions.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied

    “The second, third, and fifth Fintiv factors favor denial. The first factor is neutral, and only the fourth factor weighs against denial. Thus, we determine that the first five Fintiv factors favor discretionary denial, and we now assess compelling merits. CommScope, Paper 23 at 5 (“In circumstances where, however, the Board’s analysis of Fintiv factors 1–5 favors denial of institution, the Board shall then assess compelling merits.”). The compelling merits standard is met when “the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Guidance Memo 4. A challenge can only meet this standard “if it is highly likely that the petitioner would prevail with respect to at least one challenged claim.” OpenSky Indus., LLC v. VLSI Tech. LLC, IPR2021-01064, Paper 102 at 49 (PTAB Oct. 4, 2022) (precedential) (“OpenSky”).” slip op. at 13

  • Parallel petitionsDenied

    “and purporting to explain differences between the petitions. Paper 3. Petitioner ranks this Petition above the petition in IPR2024-00324. Id. at 1. As discussed above, we do not find that the instant Petition meets the compelling merits standard, but we find that the petition in IPR2024-00324 does meet this standard for at least one claim. Petitioner also argues that certain references are prior art under 35 U.S.C. § 102(e) that can be antedated by Patent Owner. Paper 3 at 1–2. Petitioner argues that Redford predates the ’751 patent’s earliest priority date by more than a year whereas one of the references in IPR2024-00324 only predates the ’751 by about six weeks. Id. at 2. As Patent Owner points out, however, Petitioner asserts a challenge in IPR2024-00324 that relies only on prior art under § 102(b), which cannot be predated. Paper 10 at 2. Thus, the petition in IPR2024-00324 also provides an advantage in the event of a priority dispute.” slip op. at 23

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied fintivInstitution denied

    “In view of the foregoing, we determine that Petitioner’s obviousness challenges based on Redford do not meet the compelling merits standard. Petitioner does not rely on Bartfeld or Gonze to teach the “message” limitations. See Pet. 14–21 (relying on Bartfeld for limitations regarding a synchronization code); id. at 24–36 (relying on Gonze for limitations regarding selecting and controlling a first media player application). 7. Fintiv Determination On balance, the first five Fintiv factors favor discretionary denial, and the Petition does not meet the compelling merits standard of the Guidance Memo. Therefore, we determine that discretionary denial is appropriate in view of the related district court litigation.” slip op. at 22

  • BurdenNot reached

    “As noted above, our inquiry is directed to whether the Petition meets the compelling merits standard, not the “reasonable likelihood” standard of § 314(a). On this record, we agree with Patent Owner.” slip op. at 20

  § 103 obviousnessDiscretionary denial
  Patents in suitUS 11,048,751
• Neogenomics Laboratories, Inc. v. Natera, Inc.Institution denied
  PTAB · Jun 21, 2024 · IPR2024-00346 · APJ Zhenyu Yang · IPR · Institution

  The Board denied institution for claims 1–28 under § 325(d), finding the same or substantially the same art had been presented to the Office and no material examination error was shown.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied

    “petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” Our § 325(d) analysis employs a two-prong framework: (1) whether the arguments presented in the petition are the same or substantially the same as those previously presented to the Office; and (2) if so, whether the petitioner has demonstrated a material error by the Office in its prior consideration of those arguments. Advanced Bionics, LLC v. Med-El Electromedizinishe Gerӓte GmbH, IPR2019-01469, Paper 6 (“Advanced Bionics”), 8 (PTAB Feb. 13, 2020) (precedential). “If a condition in the first part of the framework is satisfied and the petitioner fails to make a showing of material error, the Director generally will exercise discretion not to institute inter partes review.” Id. at 8–9. “At bottom, this framework reflects a commitment to defer to previous Office evaluations of the evidence of record unless material error is shown.” Id. at 9.” slip op. at 6

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied 325dInstitution denied

    “III. CONCLUSION Because the same or substantially the same art previously were presented to the Office and Petitioner has not demonstrated that the examiner materially erred when considering the prior art, we exercise our discretion under § 325(d) and decline to institute inter partes review of the ’454 patent.10 IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that the Petition is denied, and no trial is instituted.” slip op. at 18

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “erred when considering the multiplex-amplification limitation. See Advanced Bionics, 9 (“If reasonable minds can disagree regarding the purported treatment of the art or arguments, it cannot be said that the Office erred in a manner material to patentability.”). Under the asserted grounds, Petitioner relies on Forshew as the sole reference to teach this limitation, which is required in all challenged claims. Thus, we exercise our discretion under § 325(d) and decline to institute inter partes review of the ’454 patent.” slip op. at 13

  § 103 obviousnessDiscretionary denial
  Patents in suitUS 11,530,454

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.