- TCL Electronics Holdings Ltd. (F/K/A TCL Multimedia Technology Holdings, Ltd.) v. Maxell, Ltd.Institution deniedPTAB · May 20, 2025 · IPR2025-00135 · APJ John A Hudalla · IPR · Institution
The Board denied institution of IPR on all challenged claims, exercising § 314(a) discretion under Fintiv because the parallel litigation was advanced and trial would precede a final written decision.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“Under the latest applicable guidance, Petitioner’s Sotera stipulation “is highly relevant, but [is] not . . . dispositive by itself.” CAPJ Memo at 2– 3. Accordingly, we consider Petitioner’s stipulation “as part of [our] holistic analysis under Fintiv.” Id. at 2. In theory, Petitioner’s stipulation could “mitigate[] any concerns of duplicative efforts between the district court and the Board, as well as concerns of potentially conflicting decisions” regarding unpatentability/ invalidity. Sotera, Paper 12 at 19. We note that Petitioner’s initial invalidity contentions included the two asserted references here, Bennett and Nashida. Although Petitioner served those contentions before the filing of the instant Petition—in which it proffered its stipulation—we cannot discern from the instant record whether Petitioner’s present invalidity positions in the underlying litigation incorporate any aspects of its grounds here based on Bennett and Nashida. Still, we view Petitioner’s stipulation as significantly mitigating potential conflict given the likelihood that the court would hold Petitioner (and its privies) to Petitioner’s representations made here.5” slip op. at 18
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the 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.” The Board, however, has discretion to deny a petition even when a petitioner meets that threshold. Id.; see, e.g., Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016) (“[T]he agency’s decision to deny a petition is a matter committed to the Patent Office’s discretion.”); NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 (PTAB Sept. 12, 2018) (precedential) (“NHK”). For the reasons that follow, we exercise our discretion under 35 U.S.C. § 314(a) to deny institution of inter partes review.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“controller” that “receive[s] an identifier for identifying a second video content from [an] external mobile terminal” and “acquire[s] the second video content via the internet using said identifier.” Ex. 1001, 20:29–31, 20:46–47, 20:52–55 (alterations and emphasis added). In the Bennett obviousness ground, Petitioner cites Bennett’s control signal that directs display of a video stream on a television screen for teaching the recited “identifier.” Pet. 32 (citing Ex. 1004 ¶ 32). Petitioner further cites Bennett’s teaching of an Internet server as a media source for teaching the “acquire[s]” limitation. Id. at 34 (citing Ex. 1004 ¶ 55). Petitioner alternatively cites its declarant’s testimony and contends that it would have been obvious “to use an identifier such as URL in Bennett’s system to retrieve video content from the Internet.” Id. at 35 (citing Ex. 1003 ¶ 87). Yet Patent Owner’s arguments (see Prelim. Resp. 59–64) call into question whether Bennett teaches or suggests the use of either Bennett’s control signal or a URL to “acquire the second video content via the internet.” In addition, we preliminarily agree with Patent Owner that Petitioner’s arguments regarding the URL “focus on justifying an example of what an identifier could be, and fail[] to address a scenario that would justify the receipt of a URL from a phone/remote” in Bennett’s system. Id. at 63. Petitioner’s further contentions for these limitations in the Bennett– Nashida obviousness ground (see Pet. 73–75) do not necessarily cure the deficiencies mentioned by Patent Owner. Petitioner contends that “Nashida discloses the use of identifiers, such as URLs, for retrieving internet content” and cites Nashida’s teaching of “‘controller 1010 transmit[ting] a command of requesting a transmission of a URL’ for retrieving and displaying web content on a display apparatus.” Id. at 73 (quoting Ex. 1005 ¶ 120). Yet, according to Patent Owner, Nashida appears to show the URL moving in the opposite direction of Petitioner’s intended mapping: “It is therefore the image display apparatus (the alleged ‘display apparatus’) that sends the URL to the remote controller . . . , and not the other way around, as claimed by Petitioner.” Prelim. Resp. 67 (citing Ex. 1005 ¶ 1216). At the very least, these issues preclude a finding of “particularly” slip op. at 20
§ 103 obviousnessDiscretionary denialPatents in suitUS 10,219,020 - TCL Electronics Holdings Ltd. (F/K/A TCL Multimedia Technology Holdings, Ltd.) v. Maxell, Ltd.Institution deniedPTAB · May 20, 2025 · IPR2025-00134 · APJ Jason W Melvin · IPR · Institution
The Board denied institution of IPR challenging claims 1–11, 13, and 15–20, finding that the advanced Texas litigation and trial timing outweighed the Petition’s Sotera stipulation.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“September 22, 2025, which is less than four months after the statutory deadline for this Decision and “almost eight months before the projected statutory deadline for a final written decision.” Prelim. Resp. 25 (citing Ex. 2004). Accordingly, the trial is currently set to occur several months before any Final Written Decision in this case will issue. Although trial delays are a possibility, there is no evidence before us that would indicate the likelihood of a trial postponement. Thus, this factor strongly favors discretionary denial.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied fintivInstitution denied
“transmits, over the USB cable, a first signal to the digital camera for causing the digital camera to output compressed first image information.” Petitioner addresses that requirement by asserting Lawther’s interface circuit “can also be adapted to enable exchange data with a connected external device.” Pet. 39 (quoting Ex. 1004 ¶ 50). Although Lawther may “exchange data,” supporting that signals may be sent to a connected camera, Petitioner does not establish that such a signal would have been used as claimed. It may be that such a signal is inherently present in the interactions Lawther describes, but Petitioner does not assert or establish so, only that Lawther has the capability to “exchange data” with a connected camera. Because of this potential weakness in Petitioner’s showing, we cannot conclude that the Petition presents a particularly strong challenge.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“the Petition does not present a particularly strong challenge, because it inadequately addresses at least one claim limitation. In particular, limitation [1F] requires “USB interface circuitry [that] transmits, over the USB cable, a first signal to the digital camera for causing the digital camera to output compressed first image information.” Petitioner addresses that requirement by asserting Lawther’s interface circuit “can also be adapted to enable exchange data with a connected external device.” Pet. 39 (quoting Ex. 1004 ¶ 50). Although Lawther may “exchange data,” supporting that signals may be sent to a connected camera, Petitioner does not establish that such a signal would have been used as claimed. It may be that such a signal is inherently present in the interactions Lawther describes, but Petitioner does not assert or establish so, only that Lawther has the capability to “exchange data” with a connected camera. Because of this potential weakness in Petitioner’s showing, we cannot conclude that the Petition presents a particularly strong challenge.” slip op. at 9
§ 103 obviousnessDiscretionary denialPatents in suitUS 10,650,780 - T-Mobile USA, Inc. v. Voip-Pal.Com, Inc.Institution deniedPTAB · Jul 28, 2023 · IPR2023-00641 · APJ Mitchell C Weatherly · IPR · Institution
The Board denied institution under General Plastic because the factors, considered holistically, favored discretionary denial of T-Mobile’s second set of petitions.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“II. DISCRETIONARY DENIAL OF INSTITUTION Institution of an inter partes review is authorized by statute when “the information presented in the petition filed under section 311 and any response filed under section 313 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). Petitioner challenges the same claims on the same grounds based on the same arguments and evidence presented in the petitions in the Target IPRs. Compare IPR2022-” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“LLC, 973 F.3d 1321, 1332 (Fed. Cir. 2020). Under 35 U.S.C. § 315(c), the discretion of the Director to join a party to an ongoing IPR is premised on the Director’s determination that the petition warrants institution. That determination is not limited to determining whether the merits of the petition meet the reasonable likelihood threshold for at least one challenged claim. Under General Plastic, the Board may deny a petition based on the Director’s discretionary authority under § 314(a). General Plastic, Paper 19 at 15. Thus, before determining whether to join Petitioner as a party to the Target IPRs, even though the petitions are each a “me-too” petition, we first determine whether General Plastic should be applied and, if applied, whether application of the General Plastic factors warrants the exercise of discretion to deny the Petition under § 314(a).” slip op. at 5
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“institute these Proceedings without first considering whether to exercise discretion under § 314(a). The statutory provision governing joinder in inter partes review proceedings is 35 U.S.C. § 315(c), which reads: If the Director institutes an inter partes review, the Director, in his or her discretion, may join as a party to that inter partes review any person who properly files a petition under section 311 that the Director, after receiving a preliminary response under section 313 or the expiration of the time for filing such a response, determines warrants the institution of an inter partes review under section 314. Section 315(c) requires “two different decisions,” both of which are discretionary, first “whether the joinder applicant’s petition for IPR ‘warrants’ institution under § 314,” and second whether to “whether to ‘join as a party’ the joinder applicant”). Facebook, Inc. v. Windy City Innov., LLC, 973 F.3d 1321, 1332 (Fed. Cir. 2020). Under 35 U.S.C. § 315(c), the discretion of the Director to join a party to an ongoing IPR is premised on the Director’s determination that the petition warrants institution. That determination is not limited to determining whether the merits of the petition meet the reasonable likelihood threshold for at least one challenged claim. Under General Plastic, the Board may deny a petition based on the Director’s discretionary authority under § 314(a). General Plastic, Paper 19 at 15. Thus, before determining whether to join Petitioner as a party to the Target IPRs, even though the petitions are each a “me-too” petition, we first determine whether General Plastic should be applied and, if applied, whether application of the General Plastic factors warrants the exercise of discretion to deny the Petition under § 314(a).” slip op. at 4
Discretionary denialPatents in suitUS 10,880,721 - T-Mobile USA, Inc. v. Voip-Pal.Com, Inc.Institution deniedPTAB · Jul 28, 2023 · IPR2023-00640 · APJ Mitchell C Weatherly · IPR · Institution
The Board denied institution of the challenged proceedings under General Plastic and denied T-Mobile’s motions for joinder.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied general plasticInstitution denied
“II. DISCRETIONARY DENIAL OF INSTITUTION Institution of an inter partes review is authorized by statute when “the information presented in the petition filed under section 311 and any response filed under section 313 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). Petitioner challenges the same claims on the same grounds based on the same arguments and evidence presented in the petitions in the Target IPRs. Compare IPR2022- 2 Petitioner identifies T-Mobile USA, Inc. and T-Mobile US, Inc. as the real parties-in-interest. Pet. 1. 3 We refer to papers and exhibits in IPR2023-00638. Substantially similar documents were filed in IPR2023-00639, IPR2023-00640, and IPR2023- 00641. This Order applies equally to all captioned proceedings. 01231, Paper 3 (Petition), 5–6, 8–73, with Pet. 5, 8–73. In each of the Target IPRs, we determined that “Petitioner . . . demonstrated a reasonable likelihood of establishing that at least [one] claim is unpatentable” and “institute[d] an inter partes review of all challenged claims of the [challenged patents] on all grounds alleged by Petitioner.” IPR2022-01231, Paper 10 (Decision Granting Institution of Inter Partes Review), 3; see also SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018); 37 C.F.R. § 42.108(a) (“When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”). Having already considered the merits of the challenges and evidence presented in these “me too” petitions vis-à-vis the threshold of institution for inter partes review in the Target IPRs, we determine that the Petitions in these proceedings also present a reasonable likelihood of prevailing on the challenge of at least one claim of the challenged patents.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“Petitions are “me too” petitions and the merits of the challenges in the Target IPRs were formulated and fixed in the record on June 30, 2022, Petitioner did not receive any guidance from Patent Owner or the Board on its first set of petitions in October and December of 2022. Accordingly, any guidance provided by Patent Owner or the Board could not have influenced the content of the Petitions at issue in this proceeding. For this reason, we determine that the third General Plastic factor weighs against discretionarily denying institution.” slip op. at 9
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“If the Director institutes an inter partes review, the Director, in his or her discretion, may join as a party to that inter partes review any person who properly files a petition under section 311 that the Director, after receiving a preliminary response under section 313 or the expiration of the time for filing such a response, determines warrants the institution of an inter partes review under section 314. Section 315(c) requires “two different decisions,” both of which are discretionary, first “whether the joinder applicant’s petition for IPR ‘warrants’ institution under § 314,” and second whether to “whether to ‘join as a party’ the joinder applicant”). Facebook, Inc. v. Windy City Innov., LLC, 973 F.3d 1321, 1332 (Fed. Cir. 2020). Under 35 U.S.C. § 315(c), the discretion of the Director to join a party to an ongoing IPR is premised on the Director’s determination that the petition warrants institution. That determination is not limited to determining whether the merits of the petition meet the reasonable likelihood threshold for at least one challenged claim. Under General Plastic, the Board may deny a petition based on the Director’s discretionary authority under § 314(a). General Plastic, Paper 19 at 15. Thus, before determining whether to join Petitioner as a party to the Target IPRs, even though the petitions are each a “me-too” petition, we first determine whether General Plastic should be applied and, if applied, whether application of the General Plastic factors warrants the exercise of discretion to deny the Petition under § 314(a).” slip op. at 4
Discretionary denialPatents in suitUS 10,880,721 - T-Mobile USA, Inc. v. Voip-Pal.Com, Inc.Institution deniedPTAB · Jul 28, 2023 · IPR2023-00639 · APJ Mitchell C Weatherly · IPR · Institution
The Board denied institution on all challenged claims under General Plastic and denied T-Mobile’s motions for joinder.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“II. DISCRETIONARY DENIAL OF INSTITUTION Institution of an inter partes review is authorized by statute when “the information presented in the petition filed under section 311 and any response filed under section 313 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). Petitioner challenges the same claims on the same grounds based on the same arguments and evidence presented in the petitions in the Target IPRs. Compare IPR2022-” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“second set of challenges to the patents, and upon the Target IPRs settling, Petitioner would stand in to continue proceedings that would otherwise be terminated. In effect, it would be as if Petitioner had brought the second set of challenges in the first instance. This effect is especially apparent in these particular circumstances because the original petitioner in the Target IPRs, Meta, has already been dismissed from those proceedings, and the remaining parties have jointly moved to terminate them because they have settled their dispute. The current circumstances, in which a second petition has been filed after the first was denied on the merits, are the particular circumstances that General Plastic was intended to address. General Plastic, Paper 19 at 17 (“Multiple, staggered petitions challenging the same patent and same claims raise the potential for abuse.”).” slip op. at 4
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“institute these Proceedings without first considering whether to exercise discretion under § 314(a). The statutory provision governing joinder in inter partes review proceedings is 35 U.S.C. § 315(c), which reads: If the Director institutes an inter partes review, the Director, in his or her discretion, may join as a party to that inter partes review any person who properly files a petition under section 311 that the Director, after receiving a preliminary response under section 313 or the expiration of the time for filing such a response, determines warrants the institution of an inter partes review under section 314. Section 315(c) requires “two different decisions,” both of which are discretionary, first “whether the joinder applicant’s petition for IPR ‘warrants’ institution under § 314,” and second whether to “whether to ‘join as a party’ the joinder applicant”). Facebook, Inc. v. Windy City Innov., LLC, 973 F.3d 1321, 1332 (Fed. Cir. 2020). Under 35 U.S.C. § 315(c), the discretion of the Director to join a party to an ongoing IPR is premised on the Director’s determination that the petition warrants institution. That determination is not limited to determining whether the merits of the petition meet the reasonable likelihood threshold for at least one challenged claim. Under General Plastic, the Board may deny a petition based on the Director’s discretionary authority under § 314(a). General Plastic, Paper 19 at 15. Thus, before determining whether to join Petitioner as a party to the Target IPRs, even though the petitions are each a “me-too” petition, we first determine whether General Plastic should be applied and, if applied, whether application of the General Plastic factors warrants the exercise of discretion to deny the Petition under § 314(a).” slip op. at 4
Discretionary denialPatents in suitUS 8,630,234 - T-Mobile USA, Inc. v. Voip-Pal.Com, Inc.Institution deniedPTAB · Jul 28, 2023 · IPR2023-00638 · APJ Mitchell C Weatherly · IPR · Institution
The Board denied institution in IPR2023-00638 through IPR2023-00641 under General Plastic and denied the motions for joinder.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied general plasticInstitution denied
“01231, Paper 3 (Petition), 5–6, 8–73, with Pet. 5, 8–73. In each of the Target IPRs, we determined that “Petitioner . . . demonstrated a reasonable likelihood of establishing that at least [one] claim is unpatentable” and “institute[d] an inter partes review of all challenged claims of the [challenged patents] on all grounds alleged by Petitioner.” IPR2022-01231, Paper 10 (Decision Granting Institution of Inter Partes Review), 3; see also SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018); 37 C.F.R. § 42.108(a) (“When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”). Having already considered the merits of the challenges and evidence presented in these “me too” petitions vis-à-vis the threshold of institution for inter partes review in the Target IPRs, we determine that the Petitions in these proceedings also present a reasonable likelihood of prevailing on the challenge of at least one claim of the challenged patents. Notwithstanding the merits, however, Patent Owner argues that we” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“LLC, 973 F.3d 1321, 1332 (Fed. Cir. 2020). Under 35 U.S.C. § 315(c), the discretion of the Director to join a party to an ongoing IPR is premised on the Director’s determination that the petition warrants institution. That determination is not limited to determining whether the merits of the petition meet the reasonable likelihood threshold for at least one challenged claim. Under General Plastic, the Board may deny a petition based on the Director’s discretionary authority under § 314(a). General Plastic, Paper 19 at 15. Thus, before determining whether to join Petitioner as a party to the Target IPRs, even though the petitions are each a “me-too” petition, we first determine whether General Plastic should be applied and, if applied, whether application of the General Plastic factors warrants the exercise of discretion to deny the Petition under § 314(a).” slip op. at 5
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“If the Director institutes an inter partes review, the Director, in his or her discretion, may join as a party to that inter partes review any person who properly files a petition under section 311 that the Director, after receiving a preliminary response under section 313 or the expiration of the time for filing such a response, determines warrants the institution of an inter partes review under section 314. Section 315(c) requires “two different decisions,” both of which are discretionary, first “whether the joinder applicant’s petition for IPR ‘warrants’ institution under § 314,” and second whether to “whether to ‘join as a party’ the joinder applicant”). Facebook, Inc. v. Windy City Innov., LLC, 973 F.3d 1321, 1332 (Fed. Cir. 2020). Under 35 U.S.C. § 315(c), the discretion of the Director to join a party to an ongoing IPR is premised on the Director’s determination that the petition warrants institution. That determination is not limited to determining whether the merits of the petition meet the reasonable likelihood threshold for at least one challenged claim. Under General Plastic, the Board may deny a petition based on the Director’s discretionary authority under § 314(a). General Plastic, Paper 19 at 15. Thus, before determining whether to join Petitioner as a party to the Target IPRs, even though the petitions are each a “me-too” petition, we first determine whether General Plastic should be applied and, if applied, whether application of the General Plastic factors warrants the exercise of discretion to deny the Petition under § 314(a).” slip op. at 4
Discretionary denialPatents in suitUS 8,630,234 - Aviagames, Inc. v. Skillz Platform Inc.Institution deniedPTAB · Aug 9, 2022 · IPR2022-00530 · APJ Terrence W Mcmillin · IPR · Institution
The Board denied institution for claims 1–3, 7–12, and 16–21 under § 314(a), finding denial best served efficiency after the district court held the claims invalid.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“First, we believe that the Fintiv analysis and factors are a poor fit to the circumstances of this proceeding.10 The Fintiv factors are “related to a parallel, co-pending proceeding” in a district court involving the same patent challenged before the Board. See Fintiv 5 (Heading B) (capitalization omitted). Here, the District Court found the challenged patent to be invalid on a basis that we cannot consider—subject matter eligibility under 35 U.S.C. § 101. See 35 U.S.C. § 311(b) (“A petitioner in an inter partes review may request to cancel as unpatentable 1 or more claims of a patent only on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.”). There is no parallel consideration by a district court of the invalidity of the challenged claims of the ’602 patent under 35 U.S.C. §§102 or 103. Second, even if we consider the Fintiv factors, we disagree with Petitioner and determine that, under the circumstances presented here, these factors support our denying institution. The Fintiv factors and a Fintiv analysis emphasizes, inter alia, concerns of efficiency. Fintiv 5, 6, 15, 16. As discussed below, we believe that efficiency as shown by analysis of the Fintiv factors strongly favors denial of institution. We consider each of the Fintiv factors. We then weigh the factors together and decide, in this case, to exercise our discretion to deny institution based on the particular circumstances presented in this case.” slip op. at 11
Discretionary denialPatents in suitUS 9,479,602 - Micron Technology, Inc. / Micron Semiconductor Products, Inc. et al. v. Unification Technologies LLCInstitution deniedPTAB · Dec 15, 2021 · IPR2021-00940 · APJ Christopher L Ogden · IPR · Institution
The Board denied institution of review of claims 15–21 and 26, exercising § 314(a) discretion because all seven General Plastic factors favored denial.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“We agree with UTL that Micron’s explanation for the delay between the two petitions is inadequate. Because Micron does not assert the Frank Shu presentations (Exs. 1022, 1024) as prior art, the timing of their discovery is not relevant to the delay in asserting Shu, the Trim Proposals, Ban, and Jenett in the present Petition. We also agree with UTL that Micron should have known UTL’s position on the priority date of the ’406 patent when UTL served its Initial Infringement Contentions on August 21, 2020, well before Micron filed its first petition. See Ex. 2005, 5 (contending that “claims [15–21 and 26–30] of the ’406 Patent are entitled to a priority date no later than December 6, 2006.”). Thus, any delay in UTL’s interrogatory responses in April 2021 does not adequately explain Micron’s delay in filing the current Petition.” slip op. at 11
Discretionary denialPatents in suitUS 8,533,406 - Micron Technology, Inc., Micron Semiconductor Products, Inc., And Micron Technology Texas LLC v. Unification Technologies LLCInstitution deniedPTAB · Dec 15, 2021 · IPR2021-00941 · APJ Christopher L Ogden · IPR · Institution
The Board denied institution of review of claims 1–5 and 8–12, finding all seven General Plastic factors favored denying the follow-on petition.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“General Plastic, Paper 19 at 16. The General Plastic factors “are not dispositive, but part of a balanced assessment of all relevant circumstances in the case, including the merits.” Consolidated Trial Practice Guide 58 (Nov. 2019) (“Trial Practice Guide”), https://go.usa.gov/xpvPF (citing General Plastic, Paper 19 at 15).” slip op. at 7
Discretionary denialPatents in suitUS 8,762,658 - Micron Technology, Inc. / Micron Semiconductor Products, Inc. et al. v. Unification Technologies LLCInstitution deniedPTAB · Dec 15, 2021 · IPR2021-00942 · APJ Christopher L Ogden · IPR · Institution
The Board denied institution of IPR challenging claims 1–6 and 12–16, exercising its discretion under General Plastic because all seven factors favored denial.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“of institution under § 314(a) when a party files a “follow-on” petition challenging the same patent as a previous petition. See General Plastic Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 at 15–16 (PTAB Sept. 6, 2017) (precedential as to § II.B.4.i). These factors are as follows: 1. whether the same petitioner previously filed a petition directed to the same claims of the same patent; 2. whether at the time of filing of the first petition the petitioner knew of the prior art asserted in the second petition or should have known of it; 3. whether at the time of filing of the second petition the petitioner already received the patent owner’s preliminary response to the first petition or received the Board’s decision on whether to institute review in the first petition; 4. the length of time that elapsed between the time the petitioner learned of the prior art asserted in the second petition and the filing of the second petition; 5. whether the petitioner provides adequate explanation for the time elapsed between the filings of multiple petitions directed to the same claims of the same patent; 6. the finite resources of the Board; and 7. the requirement under 35 U.S.C. § 316(a)(11) to issue a final determination not later than 1 year after the date on which the Director notices institution of review. General Plastic, Paper 19 at 16. The General Plastic factors “are not dispositive, but part of a balanced assessment of all relevant circumstances in the case, including the merits.” Consolidated Trial Practice Guide 58 (Nov. 2019) (“Trial Practice Guide”), https://go.usa.gov/xpvPF (citing General Plastic, Paper 19 at 15).” slip op. at 7
Discretionary denialPatents in suitUS 9,632,727
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.