- Cisco Systems, Inc. v. Qprivacy USA LLCInstitution deniedPTAB · Aug 29, 2025 · IPR2025-00837 · APJ Coke Morgan Stewart · IPR · Director review
The Director denied institution of IPR2025-00837 under § 314(a), finding the district court schedule, duplication risks, and pending reexamination favored discretionary denial.
RulingsDirector review decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“Other considerations favor discretionary denial. In particular, the projected final written decision due date in the Board proceeding is November 12, 2026. DD Req. 8; DD Opp. 12. The district court’s scheduled trial date is October 19, 2026, and the time-to-trial statistics suggest trial will begin in October 2026. DD Req. 8. As such, it is unlikely that a final written decision in this proceeding will issue before district court trial occurs, resulting in significant duplication of effort, additional expense for the parties, and a risk of inconsistent decisions. Additionally, there is insufficient evidence that the district court is likely to stay its proceeding even if the Board were to institute trial. Furthermore, an ex parte reexamination request for one of the challenged patents is before the Office. Id. at 32. Under these circumstances, the considerations in favor of discretionary denial outweigh those that counsel against it.” slip op. at 2
- Settled expectationsInstitution denied settled expectationsDenied
“Some factors counsel against discretionary denial. For example, the challenged patents have not been in force for a significant period of time (issued in 2021 and 2023). Accordingly, Patent Owner has not developed strong settled expectations that favor discretionary denial as to these patents.” slip op. at 2
- Other 314aInstitution denied discretionary otherDenied
“Petitioner argues that national security interests counsel against discretionary denial because it is a “key supplier of critical networking infrastructure for government agencies and the military.” DD Opp. 5–7. Petitioner, however, does not explain in sufficient detail why review of the challenged patents is in the interest of national security. For example, Petitioner argues that it “provides network equipment to all four branches of the military.” Id. at 6. But Petitioner does not provide sufficient explanation as to how review of the challenged patents implicates national security interests beyond identifying that inter partes review of the challenged patents “frees up more of Cisco’s resources to be spent on critical national security and economic interests.” Id. at 5. Absent more, Petitioner’s argument does not tip the balance against discretionary denial. Although certain arguments are highlighted above, the determination to exercise discretion to deny institution is based on a holistic assessment of all of the evidence and arguments presented. Accordingly, the Petitions are denied under 35 U.S.C. § 314(a).” slip op. at 3
Discretionary denialPatents in suitUS 11,106,824 - Amazon.Com, Inc. / Amazon.Com Services LLC et al. v. Audio Pod IP, LLCInstitution deniedPTAB · Aug 14, 2025 · IPR2025-00757 · APJ Coke Morgan Stewart · IPR · Director review
The Director denied the petitions and instituted no trial, finding discretionary denial appropriate under § 314(a) based on the holistic record, including settled expectations and efficient use of Board resources.
RulingsDirector review decision- Settled expectationsInstitution denied settled expectationsDenied
“Other factors, however, weigh in favor of discretionary denial. In particular, the challenged patents in IPR2025-00757, IPR2025-00765, IPR2025-00769, IPR2025-00774, and IPR2025-00777 have been in force for approximately seven, eleven, seven, eleven, and nine years, respectively, creating strong settled expectations for Patent Owner. Furthermore, Patent Owner provides evidence that Petitioner first learned of Patent Owner’s 1 Citations are to papers in IPR2025-00757. The parties filed similar papers in IPR2025-00765, IPR2025-00768, IPR2025-00769, IPR2025-00774, and IPR2025-00777. technology in 2007, and, in 2012, Patent Owner informed Petitioner of its patent portfolio, including an issued ancestor patent to the challenged patents. DD Req. 14–15; Ex. 2013. Accordingly, Petitioner appears to have had notice of the challenged patents or patent family for a significant period of time.” slip op. at 2
- Other 314aInstitution denied discretionary otherDenied
“The patent challenged in IPR2025-00768 has not been in force as long as the other patents challenged. While ordinarily such circumstances might counsel against discretionary denial, the district court will be considering the validity of the patents challenged in IPR2025-00757, IPR2025-00765, IPR2025-00769, IPR2025-00774, and IPR2025-00777, along with the validity of the patent challenged in IPR2025-00768, and referring IPR2025- 00768 to the Board would be an inefficient use of Board resources and tips the balance to discretionary denial as to that patent too. Although certain arguments are highlighted above, the determination to exercise discretion to deny institution is based on a holistic assessment of all of the evidence and arguments presented. Accordingly, the Petitions are denied under 35 U.S.C. § 314(a).” slip op. at 3
- Director reviewDirector review, deniedDenied
“Although certain arguments are highlighted above, the determination to exercise discretion to deny institution is based on a holistic assessment of all of the evidence and arguments presented. Accordingly, the Petitions are denied under 35 U.S.C. § 314(a). In consideration of the foregoing, it is: ORDERED that Patent Owner’s request for discretionary denial is granted; and FURTHER ORDERED that the Petitions are denied, and no trial is instituted.” slip op. at 3
Discretionary denialPatents in suitUS 10,091,266 - Amazon.Com, Inc. / Amazon.Com Services LLC et al. v. Audio Pod IP, LLCInstitution deniedPTAB · Aug 14, 2025 · IPR2025-00765 · APJ Coke Morgan Stewart · IPR · Director review
The Director granted Patent Owner’s request for discretionary denial and denied the petitions under § 314(a), without instituting trial.
RulingsDirector review decision- Settled expectationsInstitution denied settled expectationsDenied
“Other factors, however, weigh in favor of discretionary denial. In particular, the challenged patents in IPR2025-00757, IPR2025-00765, IPR2025-00769, IPR2025-00774, and IPR2025-00777 have been in force for approximately seven, eleven, seven, eleven, and nine years, respectively, creating strong settled expectations for Patent Owner. Furthermore, Patent Owner provides evidence that Petitioner first learned of Patent Owner’s 1 Citations are to papers in IPR2025-00757. The parties filed similar papers in IPR2025-00765, IPR2025-00768, IPR2025-00769, IPR2025-00774, and IPR2025-00777. technology in 2007, and, in 2012, Patent Owner informed Petitioner of its patent portfolio, including an issued ancestor patent to the challenged patents. DD Req. 14–15; Ex. 2013. Accordingly, Petitioner appears to have had notice of the challenged patents or patent family for a significant period of time.” slip op. at 2
- Other 314aInstitution denied discretionary otherDenied
“The patent challenged in IPR2025-00768 has not been in force as long as the other patents challenged. While ordinarily such circumstances might counsel against discretionary denial, the district court will be considering the validity of the patents challenged in IPR2025-00757, IPR2025-00765, IPR2025-00769, IPR2025-00774, and IPR2025-00777, along with the validity of the patent challenged in IPR2025-00768, and referring IPR2025- 00768 to the Board would be an inefficient use of Board resources and tips the balance to discretionary denial as to that patent too. Although certain arguments are highlighted above, the determination to exercise discretion to deny institution is based on a holistic assessment of all of the evidence and arguments presented. Accordingly, the Petitions are denied under 35 U.S.C. § 314(a).” slip op. at 3
Discretionary denialPatents in suitUS 8,738,740 - Amazon.Com, Inc. / Amazon.Com Services LLC et al. v. Audio Pod IP, LLCInstitution deniedPTAB · Aug 14, 2025 · IPR2025-00768 · APJ Coke Morgan Stewart · IPR · Director review
The Director granted Patent Owner’s discretionary-denial request and denied the petitions under § 314(a), instituting no trial based on a holistic assessment, including settled expectations and Board resource concerns.
RulingsDirector review decision- Settled expectationsInstitution denied settled expectationsDenied
“particular, the challenged patents in IPR2025-00757, IPR2025-00765, IPR2025-00769, IPR2025-00774, and IPR2025-00777 have been in force for approximately seven, eleven, seven, eleven, and nine years, respectively, creating strong settled expectations for Patent Owner. Furthermore, Patent Owner provides evidence that Petitioner first learned of Patent Owner’s 1 Citations are to papers in IPR2025-00757. The parties filed similar papers in IPR2025-00765, IPR2025-00768, IPR2025-00769, IPR2025-00774, and IPR2025-00777. technology in 2007, and, in 2012, Patent Owner informed Petitioner of its patent portfolio, including an issued ancestor patent to the challenged patents. DD Req. 14–15; Ex. 2013. Accordingly, Petitioner appears to have had notice of the challenged patents or patent family for a significant period of time.” slip op. at 2
- Other 314aInstitution denied discretionary otherDenied
“The patent challenged in IPR2025-00768 has not been in force as long as the other patents challenged. While ordinarily such circumstances might counsel against discretionary denial, the district court will be considering the validity of the patents challenged in IPR2025-00757, IPR2025-00765, IPR2025-00769, IPR2025-00774, and IPR2025-00777, along with the validity of the patent challenged in IPR2025-00768, and referring IPR2025- 00768 to the Board would be an inefficient use of Board resources and tips the balance to discretionary denial as to that patent too. Although certain arguments are highlighted above, the determination to exercise discretion to deny institution is based on a holistic assessment of all of the evidence and arguments presented. Accordingly, the Petitions are denied under 35 U.S.C. § 314(a).” slip op. at 3
Discretionary denialPatents in suitUS 10,805,111 - Datadome S.A. / Datadome Solutions, Inc. v. Arkose Labs Holdings, Inc.Institution deniedPTAB · Aug 14, 2025 · IPR2025-00693 · APJ Coke Morgan Stewart · IPR · Director review
The Director granted Patent Owner’s discretionary-denial request and denied institution under § 314(a), citing strong settled expectations and concerns about duplicative parallel litigation.
RulingsDirector review decision- Settled expectationsDenied
“approximately seventeen years and ten years, creating strong settled expectations for Patent Owner. Petitioner argues that it had settled expectations that the challenged patents would not be asserted against it because the previous patent owner2 never asserted the challenged patents. DD Opp. 3. Petitioner, however, acknowledges that it has been aware of Patent Owner’s patent portfolio in general since at least 2022, and the challenged patents specifically since 2023, after Patent Owner sent a series of letters to Petitioner identifying the challenged patents. In a letter dated December 1, 2023, Petitioner stated that it did “not believe it requires a license to any of the Identified Arkose Patents.” Ex. 1015, 2. Therefore, Petitioner had apparently evaluated the challenged patents as of that date but does not provide a sufficient explanation as to why that amounts to settled expectations. For example, a concession of non-infringement by a patent owner may constitute settled expectations for a petitioner. However, a petitioner’s reliance on its own assessment of patents presents a different 1 Citations are to papers in IPR2025-00693. The parties filed similar papers in IPR2025-00694. 2 Patent Owner acquired the challenged patents in 2021. See Ex. 1021. consideration. Under these circumstances, Petitioner’s assertions of settled expectations do not overcome Patent Owner’s strong settled expectations.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Furthermore, the parties are engaged in a parallel proceeding in district court. Although there is no scheduled trial date, which counsels against discretionary denial, Petitioner has not offered a stipulation to address concerns of duplicative efforts and potentially conflicting decisions, which weighs in favor of discretionary denial. On balance, the considerations that favor discretionary denial outweigh those that counsel against it.” slip op. at 3
Discretionary denialPatents in suitUS 7,373,510 - Taiwan Semiconductor Manufactoring Company Ltd. v. Advanced Integrated Circuit Process LLCInstitution deniedPTAB · Aug 14, 2025 · IPR2025-00682 · APJ Coke Morgan Stewart · IPR · Director review
The Director granted Patent Owner’s discretionary-denial request and denied institution under § 314(a), citing trial timing, duplication risks, and Patent Owner’s settled expectations.
RulingsDirector review decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“In particular, the projected final written decision due date in these Board proceedings is October 18, 2026. DD Req. 9–10. The district court’s scheduled trial date is June 22, 2026, and the time-to-trial statistics suggest trial will begin between May 2026 and January 2027. Id. at 22; DD Opp. 17–23. As such, it is unlikely that a final written decision in these proceedings will issue before district court trial occurs, resulting in significant duplication of effort, additional expense for the parties, and a risk of inconsistent decisions.” slip op. at 2
- Settled expectationsInstitution denied settled expectationsDenied
“Furthermore, the challenged patents have been in force for thirteen and eleven years, respectively, creating strong settled expectations for Patent Owner, and Petitioner does not provide persuasive reasoning why an inter partes review is an appropriate use of Board resources. Dabico Airport Sols. Inc. v. AXA Power ApS, IPR2025-00408, Paper 21 at 2–3 (Director June 18, 2025). Petitioner’s argument that Patent Owner does not have settled 1 Citations are to papers in IPR2025-00682. The parties filed similar papers in IPR2025-00683. expectations because Patent Owner did not previously assert the challenged patent against Petitioner does not defeat Patent Owner’s settled expectations. DD Opp. 38. Accordingly, in the absence of sufficient explanation, Patent Owner’s strong settled expectations tip the balance in favor of discretionary denial.” slip op. at 2
- Other 314aInstitution denied discretionary otherDenied
“Although certain arguments are highlighted above, the determination to exercise discretion to deny institution is based on a holistic assessment of all of the evidence and arguments presented. Accordingly, the Petitions are denied under 35 U.S.C. § 314(a). In consideration of the foregoing, it is: ORDERED that Patent Owner’s request for discretionary denial is granted; and FURTHER ORDERED that the Petitions are denied, and no trial is instituted.” slip op. at 3
Discretionary denialPatents in suitUS 8,198,686 - Microsoft Corporation v. Ts-Optics CorporationInstitution deniedPTAB · Aug 14, 2025 · IPR2025-00767 · APJ Coke Morgan Stewart · IPR · Director review
The Director granted Patent Owner’s discretionary-denial request and denied institution under § 314(a), citing settled expectations and the holistic assessment of the record.
RulingsDirector review decision- Settled expectationsInstitution denied settled expectationsDenied
“In particular, the challenged patent has been in force for more than seventeen years, creating strong settled expectations for Patent Owner. Additionally, Petitioner was aware of the challenged patent, having taken a license to it from 2011 to 2018. DD Req. 2, 17–18; DD Opp. 2, 3, 13, 23–24. Absent exceptional circumstances, it is not an efficient use of Board resources where a party licensed the challenged patent, and then, as is the case here, now advocates for the unpatentability of that same patent.” slip op. at 2
- Other 314aInstitution denied discretionary otherDenied
“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 2
- Director reviewDirector review, deniedDenied
“In consideration of the foregoing, it is: ORDERED that Patent Owner’s request for discretionary denial is granted; and FURTHER ORDERED that the Petition is denied, and no trial is instituted.” slip op. at 2
Discretionary denialPatents in suitUS 7,266,055 - HS Hyosung Advanced Materials Corp. v. Kolon Industries, Inc.Institution deniedPTAB · Aug 14, 2025 · IPR2025-00662 · APJ Coke Morgan Stewart · IPR · Director review
The Director granted Patent Owner’s request for discretionary denial and denied the petitions under § 314(a), declining to institute inter partes review.
RulingsDirector review decision- Settled expectationsInstitution denied settled expectationsDenied
“Other factors, however, weigh in favor of discretionary denial. In particular, the challenged patents have been in force for more than seven, six, and nine years, respectively, creating strong settled expectations for Patent Owner, and Petitioner does not provide any persuasive reasoning why an inter partes review is an appropriate use of Board resources under these circumstances. Dabico Airport Sols. Inc. v. AXA Power ApS, IPR2025- 00408, Paper 21 at 2–3 (Director June 18, 2025). In the absence of any such information, the Office is disinclined to disturb the strong settled expectations of Patent Owner. Furthermore, Petitioner has not filed a 1 Citations are to papers in IPR2025-00662. The parties filed similar papers in IPR2025-00663 and IPR2025-00664. stipulation to address concerns of duplicative efforts and potentially conflicting decisions should the stay be lifted. DD Opp. 28 n.10. On balance, the circumstances in these proceedings favor discretionary denial.” slip op. at 2
- Director reviewDirector review, deniedDenied
“Although certain arguments are highlighted above, the determination to exercise discretion to deny institution is based on a holistic assessment of all of the evidence and arguments presented. Accordingly, the Petitions are denied under 35 U.S.C. § 314(a). In consideration of the foregoing, it is: ORDERED that Patent Owner’s request for discretionary denial is granted; and FURTHER ORDERED that the Petitions are denied, and no trial is instituted.” slip op. at 3
Discretionary denialPatents in suitUS 9,789,731 - Microsoft Corporation v. Dialect, LLCInstitution deniedPTAB · Aug 14, 2025 · IPR2025-00656 · APJ Coke Morgan Stewart · IPR · Director review
The Director granted Patent Owner’s discretionary-denial request and denied the petitions, declining to institute IPR based on the totality of the circumstances.
RulingsDirector review decision- Settled expectationsInstitution denied settled expectationsDenied
“wholly owned subsidiary of Petitioner, owned and maintained the challenged patents from 2015 until 2021. DD Opp. 4, 6; Ex. 1034; Paper 10, 1. Nuance further retained a license upon selling the patent that extended to its customers. DD Opp. 4, 6. Absent exceptional circumstances, it is not an appropriate use of Office resources where a party’s wholly owned subsidiary owned, maintained, sold, and retained a license for a patent, but, as is the case here, the party now advocates for its unpatentability. See Analog Devices, Inc. v. Number 14 B.V., IPR2025-00550, Paper 10 at 2 (Director July 16, 2025). Additionally, the challenged patents have been in force for more than fifteen, twelve, nine, thirteen, and eight years, respectively, creating strong settled expectations for Patent Owner, and Petitioner does not provide any persuasive reasoning why an inter partes review is an 1 Citations are to papers in IPR2025-00655. The parties filed similar papers in IPR2025-00656, IPR2025-00657, IPR2025-00658, and IPR2025-00659. appropriate use of Board resources. Dabico Airport Sols. Inc. v. AXA Power ApS, IPR2025-00408, Paper 21 at 2–3 (Director June 18, 2025).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied discretionary otherDenied
“Furthermore, one of Petitioner’s real-parties-in-interest, Bank of America, N.A., is a party to a parallel district court proceeding that involves the same challenged patents, the same challenged claims, and significantly overlapping invalidity contentions as these IPR proceedings. DD. Req. 15– 16; see Ex. 2003, 3, 60–76. The projected final written decision due date in these Board proceedings is in October 2026. DD Req. 6. The district court’s scheduled trial date is May 4, 2026. DD Opp. 15–16. As such, it is unlikely that a final written decision in these proceedings will issue before district court trial occurs, resulting in significant duplication of effort, additional expense for the parties, and a risk of inconsistent decisions. This additionally weighs in favor of discretionary denial.” slip op. at 3
- Other 314aInstitution denied discretionary otherDenied
“Although certain arguments are highlighted above, the determination to exercise discretion to deny institution is based on a holistic assessment of all of the evidence and arguments presented. Accordingly, the Petitions are denied under 35 U.S.C. § 314(a). In consideration of the foregoing, it is: ORDERED that Patent Owner’s request for discretionary denial is granted; and FURTHER ORDERED that the Petitions are denied, and no trial is instituted.” slip op. at 3
Discretionary denialPatents in suitUS 8,447,607 - Microsoft Corporation v. Dialect, LLCInstitution deniedPTAB · Aug 14, 2025 · IPR2025-00655 · APJ Coke Morgan Stewart · IPR · Director review
The Director granted Patent Owner’s discretionary-denial request and denied institution of IPR on the challenged patent under § 314(a), based on the holistic assessment.
RulingsDirector review decision- Settled expectationsInstitution denied settled expectationsDenied
“wholly owned subsidiary of Petitioner, owned and maintained the challenged patents from 2015 until 2021. DD Opp. 4, 6; Ex. 1034; Paper 10, 1. Nuance further retained a license upon selling the patent that extended to its customers. DD Opp. 4, 6. Absent exceptional circumstances, it is not an appropriate use of Office resources where a party’s wholly owned subsidiary owned, maintained, sold, and retained a license for a patent, but, as is the case here, the party now advocates for its unpatentability. See Analog Devices, Inc. v. Number 14 B.V., IPR2025-00550, Paper 10 at 2 (Director July 16, 2025). Additionally, the challenged patents have been in force for more than fifteen, twelve, nine, thirteen, and eight years, respectively, creating strong settled expectations for Patent Owner, and Petitioner does not provide any persuasive reasoning why an inter partes review is an 1 Citations are to papers in IPR2025-00655. The parties filed similar papers in IPR2025-00656, IPR2025-00657, IPR2025-00658, and IPR2025-00659. appropriate use of Board resources. Dabico Airport Sols. Inc. v. AXA Power ApS, IPR2025-00408, Paper 21 at 2–3 (Director June 18, 2025).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“Furthermore, one of Petitioner’s real-parties-in-interest, Bank of America, N.A., is a party to a parallel district court proceeding that involves the same challenged patents, the same challenged claims, and significantly overlapping invalidity contentions as these IPR proceedings. DD. Req. 15– 16; see Ex. 2003, 3, 60–76. The projected final written decision due date in these Board proceedings is in October 2026. DD Req. 6. The district court’s scheduled trial date is May 4, 2026. DD Opp. 15–16. As such, it is unlikely that a final written decision in these proceedings will issue before district court trial occurs, resulting in significant duplication of effort, additional expense for the parties, and a risk of inconsistent decisions. This additionally weighs in favor of discretionary denial.” slip op. at 3
- Other 314aInstitution denied discretionary otherDenied
“Although certain arguments are highlighted above, the determination to exercise discretion to deny institution is based on a holistic assessment of all of the evidence and arguments presented. Accordingly, the Petitions are denied under 35 U.S.C. § 314(a). In consideration of the foregoing, it is: ORDERED that Patent Owner’s request for discretionary denial is granted; and FURTHER ORDERED that the Petitions are denied, and no trial is instituted.” slip op. at 3
Discretionary denialPatents in suitUS 7,640,160
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.