- Intel Corporation / Lenovo (United States) Inc. et al. v. Collision Communications, Inc.Institution deniedPTAB · May 28, 2025 · IPR2025-00301 · APJ Bart A Gerstenblith · IPR · Institution
The Board denied institution of review for claims 1–11, 16, and 21 under § 314(a), finding the Fintiv factors favored discretionary denial, and denied joinder.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“2026. This date is nearly five months prior to the date on which the final written decision would be due if trial were instituted in this proceeding. And, even if we assume Petitioner’s alleged February–March 2026 trial date, this date too is several months prior to the projected final written decision deadline. As such, it is unlikely that a final written decision in this proceeding would issue before trial in the district court, unless the trial was delayed or rescheduled for a later time. Thus, we find this factor weighs in favor of exercising our discretion to deny institution. See ARM Ltd. v. Daedalus Prime LLC, IPR2025-00207, Paper 10 at 2 (May 16, 2025) (Before the Office of the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office) (exercising discretion to deny institution with the same relative timing between district court trial and final written decision deadline).” slip op. at 13
- PTAB / AIA Trials › Motions to amend / substitute claimsNot reached
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied
“presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Institution of inter partes review, however, is discretionary. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.”). For the reasons discussed below, we exercise discretion pursuant to 35 U.S.C. § 314(a) not to institute inter partes review. Additionally, for the same reasons and because institution was denied in IPR2024-01248, we deny Petitioner’s Motion for Joinder. See 35 U.S.C. § 315(c) (“[T]he Director . . . may join as a party . . . any person who properly files a petition under section 311 that the Director . . . determines warrants the institution of an inter partes review under section 314.”).” slip op. at 3
Discretionary denialPatents in suitUS 9,814,071 - Charter Communications, Inc. / Plume Design, Inc. v. Adaptive Spectrum And Signal Alignment, Inc.Institution deniedPTAB · May 22, 2025 · IPR2025-00088 · APJ Kevin C Trock · IPR · Institution
The Board denied institution of IPR on all challenged claims under § 314(a), finding the Fintiv factors favored discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“7. Conclusion on Discretionary Review When considering the Fintiv factors, we take “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Fintiv, Paper 11 at 6. Based on our review, we find that the factors weigh in favor of exercising discretion to deny institution of the Petition. The factors weighing in favor of exercising discretionary denial include the scheduling of the parallel proceeding’s trial date many months prior to the Board’s projected statutory deadline for a final written decision, the substantial investment by the parties and the District Court in the ASSIA Litigation, the recommended denial of the motion to transfer by the District Court, and the issues on the merits raised by the Patent Owner in its Preliminary Response and our preliminary consideration. In our view, these factors outweigh the other Fintiv factors, including the lack of a stay, Petitioner’s offer to limit overlap between the two proceedings via stipulation, and the presence of Plume Design as a Petitioner in this proceeding. We, therefore, are persuaded that the interests of the efficiency under 35 U.S.C. § 314(a) to deny institution of the Petition.” slip op. at 16
Discretionary denialPatents in suitUS 11,050,654 - PTAB · Apr 28, 2025 · IPR2025-00013 · APJ Scott Raevsky · IPR · Institution
The Board denied institution of IPR on claims 1–23 under § 314(a), relying on the Fintiv factors and its holistic assessment of the parallel litigation and petition merits.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“the Petition under Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”). Prelim. Resp. 34–41. Fintiv identifies a non-exclusive list of factors we consider when addressing whether a related, parallel district court action provides a basis for discretionary denial under 35 U.S.C. § 314(a). Fintiv, Paper 11 at 5–16. These factors include: 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 › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Institution of inter partes review, however, is discretionary. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.”). For the reasons discussed below, we exercise discretion under 35 U.S.C. § 314(a) not to institute inter partes review.” slip op. at 2
Discretionary denialPatents in suitUS 11,770,313 - PTAB · Apr 28, 2025 · IPR2025-00012 · APJ Scott Raevsky · IPR · Institution
The Board denied institution of review of claims 1–25 under § 314(a), citing the parallel trial schedule, investment, transfer ruling, and not particularly strong merits.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“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. Id. at 5–6. We take “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review” when evaluating these factors. Id. at 6.” slip op. at 5
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Institution of inter partes review, however, is discretionary. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.”). For the reasons discussed below, we exercise discretion under 35 U.S.C. § 314(a) not to institute inter partes review.” slip op. at 2
Discretionary denialPatents in suitUS 10,848,398 - Samsung Electronics America, Inc. / Samsung Electronics Co., Ltd. v. Collision Communications, Inc.Institution deniedPTAB · Apr 28, 2025 · IPR2025-00011 · APJ Neil T Powell · IPR · Institution
The Board denied institution of IPR challenging claims 1–4 and 6–8, exercising § 314(a) discretion because the Fintiv factors favored denial.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“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. Id. at 5–6. We take “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review” when evaluating these factors. Id. at 6.” slip op. at 19
- Expert testimonyPetitioner expert discountedOther
“For example, citing Fuller’s disclosures of “signals,” Petitioner argues that “[a person of ordinary skill in the art] would have understood that each individual signal necessarily includes an amplitude, and that the M individual signals thus correspond to a plurality of individual amplitude estimates.” Pet. 31 (citing Ex. 1003 ¶ 99). Similarly, citing Fuller’s disclosure of “channel estimates,” Petitioner argues that “[a person of ordinary skill in the art] would have understood that the channel estimates include amplitude estimates, and that the estimated individual signals include at least estimated amplitudes.” Id. at 33 (citing Ex. 1003 ¶ 102). In support of these arguments, however, Petitioner cites Dr. Min’s testimony, which does not cite objective supporting evidence and, thus, warrants limited weight. Ex. 1003 ¶¶ 99, 102; see also 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”).” slip op. at 23
- Skill levelSkill level petitioner adoptedDecided for petitioner
“of ordinary skill in the art at the time of the invention would have had “at least a bachelor’s degree in electrical engineering, computer engineering, computer science, physics, or an equivalent field, and two years of experience with cellular telecommunications, radio-access network architectures and protocols, and signal propagation in wireless networks.” Pet. 6 (citing Ex. 1003 ¶ 56). Petitioner further proposes that “[m]ore education can supplement practical experience and vice versa.” Id. (citing Ex. 1003 ¶ 56). In its Preliminary Response, Patent Owner does not take a position on the relevant level of ordinary skill in the art. See generally Prelim. Resp. At this stage of the proceeding and on the present record, we adopt Petitioner’s uncontested proposed level of ordinary skill in the art, which we find consistent with the level of ordinary skill in the art reflected by the ’651 patent and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 9
Discretionary denialcites PhillipsPatents in suitUS 7,920,651 - 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 - PTAB · Apr 17, 2025 · IPR2024-01379 · APJ Kevin C Trock · IPR · Institution
The Board denied institution of review of claim 20, finding that the Fintiv factors favored discretionary denial under § 314(a).
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“(which we address in more detail below) turns on the determination of the meaning of the claim term “periodically.” We note that the District Court has construed the term “periodically monitor” to mean “monitor at regular intervals of time.” See Sec. II.C below. Given this construction, which we preliminarily agree with at this stage, we cannot agree with Petitioner that the Petition presents “a strong case for obviousness.” Thus, we find that Factor 6 weighs in favor of exercising discretionary denial.” slip op. at 16
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“periodically” as it is used in claim 20, with Petitioner arguing that “periodically’ means “repeated . . . over time” and Patent Owner arguing that “periodically” means “at fixed intervals.” See Pet. 25; Prelim. Resp. 8. Our preliminary determination of the ordinary and customary meaning of the term “periodically” as it is used in claim 20 substantially impacts our view of the merits in this case as this issue is the principal one raised by Patent Owner in its Preliminary Response. See Prelim. Resp. 5–22. slip op. at 20
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner’s description of a person of ordinary skill appears consistent with the subject matter of the ’996 patent. This is supported by the testimony of Petitioner’s declarant, Dr. Martin. See Ex. 1002 ¶¶ 55–56. We adopt Petitioner’s assessment of a person of ordinary skill for purposes of this Decision, with the exception of the qualifier “at least,” to keep the description from being vague and extending to a level reflecting that of an expert. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). C. Claim Construction” slip op. at 18
Claim constructionDiscretionary denialcites Phillips · GrahamPatents in suitUS 7,809,996 - PTAB · Jan 19, 2023 · IPR2022-01233 · APJ Neil T Powell · IPR · Institution
The Board denied institution of review of claims 1–10, 13, 14, 16, and 21 under § 314(a), finding the Fintiv factors decisively favored discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“§ 314(a). See NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 at 20 (PTAB Sept. 12, 2018) (precedential); Patent Trial and Appeal Board, Consolidated Trial Practice Guide, 58 & n.2 (Nov. 2019) (“Trial Practice Guide”)8. We consider the following factors to assess “whether efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding”: 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. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5–6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”). In evaluating these factors, we “take[] a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Id. at 6.” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied
“whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). We may institute an inter partes review if the information presented in the petition filed under 35 U.S.C. § 311, and any preliminary response filed under § 313, shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition. 35 U.S.C. § 314(a). However, we have discretion to deny a petition even if a petitioner satisfies the “reasonable likelihood” threshold standard for instituting trial. 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.”). Based on the current record and for the reasons explained below, we exercise our discretion under 35 U.S.C. § 314(a) to deny institution of an inter partes review of the ’071 patent.” slip op. at 2
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“We do not agree with Petitioner’s assertion that it presents a “compelling unpatentability challenge.” Pet. 86; Reply 2–5. Weighing the arguments and evidence presently of record, we do not find Petitioner’s evidence sufficient to “plainly” result in a conclusion of unpatentability. Fintiv Memo 5 n.6; Pet. 9–81; Prelim. Resp. 16–43. For example, in the challenge based on Kim, we do not find Petitioner’s evidence regarding claim elements [1.4] and [21.3] sufficient to plainly lead to a conclusion of unpatentability. See Pet. 12–18, 28; Prelim. Resp. 21–25. We find significant merit in Patent Owner’s position that Petitioner fails to address persuasively limitation [1.4]’s recitation of “distinguishing the information simultaneously received from each of the transmitting nodes according to their respective said unique estimated signal parameters” and similar language in element [21.3]. Prelim. Resp. 21–25. Patent Owner presents viable arguments that Petitioner addresses this claim language with evidence that is unavailing, for instance, because it relates to Kim’s request channel, whereas Petitioner’s evidence for earlier, related limitations relates to traffic data. Id. As another example, we find significant merit in Patent Owner’s position that Petitioner’s Baum-based challenge relies on different embodiments of Baum without providing sufficiently persuasive evidence that the different embodiments would apply to one another. See Pet. 75–76 (relying on “joint detection”); Prelim. Resp. 41 (“First, the Petition combines multiple embodiments from Baum, but without any explanation of why the teachings relating to the non-joint detection embodiment would apply to the joint detection embodiment so as to teach distinguishing the individual signal components of the ‘joint desired signal.’”); see also Reply 5; Sur-reply 5. Petitioner apparently views the disclosures in Baum’s columns 18–21 as all discussing the same embodiment, but Petitioner does not provide sufficiently persuasive support for this position. See Pet. 75–76; Reply 5.” slip op. at 17
- BurdenNot reached
“We do not agree with Petitioner’s assertion that it presents a “compelling unpatentability challenge.” Pet. 86; Reply 2–5. Weighing the arguments and evidence presently of record, we do not find Petitioner’s evidence sufficient to “plainly” result in a conclusion of unpatentability. Fintiv Memo 5 n.6; Pet. 9–81; Prelim. Resp. 16–43. For example, in the challenge based on Kim, we do not find Petitioner’s evidence regarding claim elements [1.4] and [21.3] sufficient to plainly lead to a conclusion of unpatentability. See Pet. 12–18, 28; Prelim. Resp. 21–25. We find significant merit in Patent Owner’s position that Petitioner fails to address persuasively limitation [1.4]’s recitation of “distinguishing the information simultaneously received from each of the transmitting nodes according to their respective said unique estimated signal parameters” and similar language in element [21.3]. Prelim. Resp. 21–25. Patent Owner presents viable arguments that Petitioner addresses this claim language with evidence that is unavailing, for instance, because it relates to Kim’s request channel, whereas Petitioner’s evidence for earlier, related limitations relates to traffic data. Id. As another example, we find significant merit in Patent Owner’s position that Petitioner’s Baum-based challenge relies on different embodiments of Baum without providing sufficiently persuasive evidence that the different embodiments would apply to one another. See Pet. 75–76 (relying on “joint detection”); Prelim. Resp. 41 (“First, the Petition combines multiple embodiments from Baum, but without any explanation of why the teachings relating to the non-joint detection embodiment would apply to the joint detection embodiment so as to teach distinguishing the individual signal components of the ‘joint desired signal.’”); see also Reply 5; Sur-reply 5. Petitioner apparently views the disclosures in Baum’s columns 18–21 as all discussing the same embodiment, but Petitioner does not provide sufficiently persuasive support for this position. See Pet. 75–76; Reply 5.” slip op. at 17
§ 103 obviousnessDiscretionary denialPatents in suitUS 9,814,071 - 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
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.