- Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Truesight Communications LLCInstitution deniedPTAB · Apr 21, 2025 · IPR2024-01477 · APJ Bach V Hoang · IPR · Institution
The Board denied institution of IPR on claims 1–14 under § 314(a), finding that the Fintiv factors favoring denial outweighed the stipulation against denial.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“Statutory Deadline We weigh this factor as favoring the exercise of discretionary denial. The parties agree that the projected statutory deadline for issuing our Final Written Decision (April 23, 2026) is a little more than six months after trial is currently scheduled in the District Court litigation (October 6, 2025). Supp. Br. 4; Prelim. Resp. 19–20. Because the currently scheduled District Court trial is set to begin six months before our deadline to reach a final decision, this factor favors discretionary denial in this case. See Fintiv, Paper 11 at 9. C. Factor 3 – Investment in the Parallel Proceeding We weigh this factor as favoring the exercise of discretionary denial. Showing substantial investment in the District Court litigation, document production is substantially complete and fact discovery will be completed within two weeks of this Decision on Institution. Ex. 2001, 4–5 (Second Amended Docket Control Order). Further, a hearing on claim construction and associated briefing is complete. Id. And, the deadline to serve Institution. Id. at 4. These actions show that there has been notable investment by the parties in the District Court litigation. Furthermore, we must consider this parallel work in relation to the October 6, 2025 District Court litigation trial date, which is six months before the projected statutory deadline of our Final Written Decision. See Fintiv, Paper 11 at 10. As work in the District Court litigation has moved beyond preliminary stages into more advanced stages, instituting at this time implicates at least some duplicative costs. See id. On the matter of petition timing, it is often reasonable for a petitioner to wait to file its petition until it learns which claims are being asserted against it in the parallel proceeding. Fintiv, Paper 11 at 11. Here, Petitioner filed its petition on September 27, 2024, which is four months after receiving Patent Owner’s May 29, 2024 disclosure of asserted claims and infringement contentions and nine months after it was served Patent Owner’s December 29, 2023 infringement complaint. Ex. 1017; Ex. 1018, 1. Further, Petitioner served its amended invalidity contentions in the District Court litigation on December 17, 2024, i.e., after it filed its Petition.5 We do not find the timing of the Petition in this case to outweigh the significant investment in the District Court litigation. Considering the substantial investment in the District Court litigation and the rapidly advancing District Court litigation trial date balanced against the timing of the Petition, we determine this factor weighs in favor of discretionary denial.” slip op. at 11
Discretionary denialPatents in suitUS 8,898,803 - NXP USA, Inc. v. Impinj, Inc.Rehearing deniedPTAB · Aug 25, 2022 · PGR2022-00005 · APJ Ken B Barrett · PGR · Rehearing
The Board denied NXP’s rehearing request, leaving in place the denial of PGR institution on claims 1–20 based on its holistic Fintiv analysis.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision should be modified. 37 C.F.R. § 42.71(d). “The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id. When rehearing a decision on a petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). “An abuse of discretion may be indicated if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors.” Huawei Device Co., Ltd., v. Optis Cellular Tech., LLC, IPR2018-00816, Paper 19, 3 (PTAB Jan. 8, 2019) (precedential) (citations omitted). Further, “[a]bsent a showing of ‘good cause’ . . . , new evidence will not be admitted” in connection with a request for rehearing. Patent Trial and Appeal Board Consolidated Trial Practice Guide 90 (Nov. 2019), https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf (citing Huawei Device Co., IPR2018-00816, Paper 19 at 4). Thus, a request for rehearing is not generally an opportunity to present new arguments or evidence.” slip op. at 3
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Denied
“with the Request. “Ideally, a party seeking to admit new evidence with a rehearing request would request a conference call with the Board prior to filing such a request so that it could argue ‘good cause’ exists for admitting the new evidence. Alternatively, a party may argue ‘good cause’ exists in the rehearing request itself.” Huawei Device Co., IPR2018-00816, Paper 19 at 4; see also Consolidated Trial Practice Guide at 90 (quoting the same). Petitioner did not request a conference call prior to filing the Request to argue that good cause exists and does not present arguments in the Request regarding good cause. Accordingly, we find that Petitioner has not met its burden of showing that good cause exists to justify consideration of those exhibits to evaluate whether we erred by overlooking or misapprehending anything in the Decision. B. We Did Not Misapprehend the Significance of the Facts Pertaining to” slip op. at 4
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for patent owner
“argument, we stated that, “[b]ecause the currently scheduled trial in the parallel proceeding is scheduled to begin over two months before our deadline to reach a final decision, this factor weighs somewhat in favor of discretionary denial.” Dec. 9. After discussing all of the Fintiv factors and after “consider[ing] ‘a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review,’” we exercised discretion to deny institution of a post-grant review. Id. at 12–13 (quoting Fintiv, Paper 11 at 6).” slip op. at 6
Discretionary denialPatents in suitUS 10,929,734 - PTAB · May 19, 2022 · IPR2022-00239 · APJ John A Hudalla · IPR · Institution
The Board denied institution for claims 1–20 under § 314(a), finding the advanced parallel litigation posture favored discretionary denial under Fintiv.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“acted upon Patent Owner’s request to modify the schedule. As such, we consider this factor with the trial being set for November 7, 2022. See Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 15 at 13 (May 13, 2020) (informative) (“We generally take courts’ trial schedules at face value absent some strong evidence to the contrary.”). This is over six months before the expected date of our final written decision. Thus, we find that the second Fintiv factor favors exercising authority to deny institution.” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“demonstrating that the challenged claims are invalid.” Pet. 79; see also Pet. Reply 3 (similar argument). Patent Owner argues that the Petition is deficient based on its arguments against the merits of the Petition. Prelim. Resp. 10. Based on the preliminary record, the merits of Petitioner’s asserted grounds seem to meet the “reasonable likelihood” standard for institution. Thus, we determine that the sixth Fintiv factor is neutral.” slip op. at 13
Discretionary denialPatents in suitUS 8,248,940 - PTAB · May 19, 2022 · IPR2022-00238 · APJ John A Hudalla · IPR · Institution
The Board denied institution for claims 1–17 under § 314(a), finding the advanced posture of the parallel litigation outweighed countervailing factors under Fintiv.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied fintivInstitution denied
“review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). 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.” For the reasons that follow, we exercise our discretion to deny institution of an inter partes review under 35 U.S.C. § 314(a).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“advanced . . . and instituting would lead to duplicative costs” with respect to invalidity/unpatentability. Fintiv, Paper 11 at 10. Accordingly, we find that the advanced state of expert discovery regarding invalidity favors exercising discretion to deny institution.” slip op. at 10
Discretionary denialPatents in suitUS 7,548,945 - NXP USA, Inc. v. Impinj, Inc.Institution deniedPTAB · May 2, 2022 · PGR2022-00005 · APJ Ken B Barrett · PGR · Institution
The Board denied institution under Fintiv because the parallel district court case was advanced, scheduled for trial earlier, and substantially overlapped with the petition.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“decision in this proceeding, if institution were granted, would be May 2023, over two months after the currently scheduled trial date. “We generally take courts’ trial schedules at face value absent some strong evidence to the contrary.” Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 15, 13 (PTAB May 13, 2020) (informative) (“Fintiv II”). “If the court’s trial date is earlier than the projected statutory deadline, the Board generally has weighed this fact in favor of exercising authority to deny institution.” Fintiv, Paper 11 at 9. Because the currently scheduled trial in the parallel proceeding is scheduled to begin over two months before our deadline to reach a final decision, this factor weighs somewhat in favor of discretionary denial. See Fintiv II, Paper 15 at 13.” slip op. at 9
Discretionary denialPatents in suitUS 10,929,734 - NXP USA, Inc. v. Impinj, Inc.Institution deniedPTAB · Apr 21, 2022 · IPR2021-01556 · APJ Kevin C Trock · IPR · Institution
The Board denied institution under § 314(a), finding the Fintiv factors favoring denial collectively outweighed those against it.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“strong evidence to the contrary.” Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 15, 13 (PTAB May 13, 2020) (informative) (“Fintiv II”). “If the court’s trial date is earlier than the projected statutory deadline, the Board generally has weighed this fact in favor of exercising authority to deny institution.” Fintiv, Paper 11 at 9. Because the currently scheduled trial in the parallel proceeding is scheduled to begin two months before our deadline to reach a final decision, this factor weighs somewhat in favor of discretionary denial. See Fintiv II, Paper 15 at 13.” slip op. at 8
Discretionary denialPatents in suitUS 10,776,198 - Cisco Systems, Inc. v. Monarch Networking Solutions LLCInstitution deniedPTAB · Mar 31, 2021 · IPR2020-01678 · APJ Robert J Weinschenk · IPR · Institution
The Board denied institution of IPR for claims 1–10 under § 314(a), finding that the Fintiv factors favored denial because the district court trial was near and the litigation was substantially advanced.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied fintivInstitution denied
“Section 314(a) states that [t]he Director may not authorize an inter partes review to be instituted unless the Director determines that 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. Under § 314(a), we have discretion to deny institution of an inter partes review. Cuozzo, 136 S. Ct. at 2140. We consider several factors when determining whether to deny institution under § 314(a) based on a parallel district court proceeding, specifically 1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits.” slip op. at 5
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“The current trial date in the District Court Litigation is June 7, 2021, which is approximately ten months before the projected statutory deadline for a final written decision in this case. Reply 2; Sur-reply 3; Ex. 2012, 1. Although there is some uncertainty regarding the trial date in the District Court Litigation, it does not outweigh the substantial gap between the trial date and the final written decision deadline.” slip op. at 7
Discretionary denialPatents in suitUS 8,451,844 - Hewlett Packard Enterprise Co. v. Chrimar Systems, Inc.Rehearing deniedPTAB · Nov 26, 2019 · IPR2019-00032 · APJ Frederick C Laney · IPR · Rehearing
The Board denied rehearing and maintained its denial of institution because § 315(a)(1) barred review after Petitioner filed and voluntarily dismissed a declaratory judgment action.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“the Board misapprehended or overlooked, and the place where each matter was previously addressed.” 37 C.F.R. § 42.71(d). The party challenging a decision in a request for rehearing bears the burden of showing that the decision should be modified. Id.” slip op. at 2
- PTAB / AIA Trials › §315(b) time barInstitution denied time barInstitution denied
“institution of an inter partes review because Petitioner previously filed a declaratory judgment action challenging the validity of claims in the ’012 patent, notwithstanding Petitioner’s voluntary dismissal without prejudice of that declaratory judgment action. Dec. 5–8. We explained that our conclusion was compelled by the Federal Circuit’s analysis in Click-to-Call Technologies, LP v. Ingenio, Inc., 899 F.3d 1321 (Fed. Cir. 2018) (en banc as to footnote 3). Dec. 6–8.” slip op. at 2
Discretionary denialPatents in suitUS 8,155,012 - Old Republic General Insurance Group, Inc. / Old Republic Insurance Company et al. v. Intellectual Ventures II LLCInstitution deniedPTAB · Apr 15, 2016 · CBM2015-00184 · APJ Jon B Tornquist · CBM · Institution
The Board denied institution for claims 1-49 because Petitioner did not establish that the patent was eligible for covered business method review.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We apply 35 U.S.C. § 324(a), which provides that a post-grant review may not be instituted “unless . . . the information presented in the petition . . . would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” For the reasons that follow, we do not institute a covered business method patent review.” slip op. at 2
Discretionary denialPatents in suitUS 6,546,002 - Acxiom Corporation v. Phoenix Licensing, LLCInstitution deniedPTAB · Nov 19, 2015 · CBM2015-00137 · APJ Stacey G White · CBM · Institution
The Board denied the petitions because Acxiom did not establish standing to seek covered business method review; it did not reach the merits of the challenged claims.
RulingsInstitution decision- PTAB / AIA Trials › Real party in interest / privityDenied
“authority with respect to the defense, settlement, or compromise of any such claim.” Id. As to the Declaration, Brian Williamson, Senior Account Executive for Acxiom’s Gerber Account, declares that it is his “understanding that Gerber sent Acxiom notice of a demand for indemnification for costs and potential liabilities arising from the [patent infringement suits involving the subject patents] referencing the indemnification provision in the Services and Data Agreement.” Ex. 1128 ¶¶ 2, 6. We do not find this evidence to be sufficient to show that Petitioner has standing to bring this Petition. See 37 C.F.R. § 42.304(a) (stating that it is Petitioner’s burden to “demonstrate that the patent for which review is sought is a covered business method patent, and that the petitioner meets the eligibility requirements of § 42.302.”).” slip op. at 5
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Denied
“Default Protective Order and moves to seal Exhibits 1128 and 1129, as confidential pursuant to the Default Protective Order. Paper 5, 1. These Exhibits, however, are cited extensively in the Decision. Confidential information relied upon in a decision to grant or deny a request to institute ordinarily will be made public. Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,760 (Aug. 14, 2012). We are not persuaded that there is sufficient reason to depart from that principle. Therefore, Petitioner’s Motion to Seal is denied. Accordingly, we order Exhibits” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied rpiInstitution denied
“their real parties-in-interest or privies that have been sued or charged with infringement of a “covered business method patent,” which does not include patents for “technological inventions.” AIA §§ 18(a)(1)(B), 18(d)(1); see 37 C.F.R. § 42.302. Of key importance in this case is the requirement that “a person may not file a petition for a transitional proceeding with respect to a covered business method patent unless the person or the person’s real party in interest or privy has been sued for infringement of the patent or has been charged with infringement under that patent.” AIA § 18(a)(1)(B) (emphases added); see 37 C.F.R. § 42.302(a). Regarding this requirement, Petitioner does not allege that it has been charged with or sued for infringement, but instead contends that its” slip op. at 3
Discretionary denialPatents in suitUS 7,890,366
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.