- PTAB · Jun 25, 2025 · IPR2024-01280 · APJ Jo-Anne M Kokoski · IPR · Remand
On remand, the Board denied institution under § 314(a), finding the Fintiv factors favored denial despite declining to deny under § 325(d).
RulingsRemand decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for petitioner
“Other than initials on a lengthy IDS, nothing in the record indicates that the Examiner substantively considered Takeuchi, Kim, Pienemann, or among over 1,000 other references listed on the IDS, which, as noted in the Director Review Decision, “is over 40 times the size of a typical IDS.” Pet. Remand Br. 5–6; DR Dec. 7 n.3 (citing Setting and Adjusting Patent Fees During Fiscal Year 2025, 89 FR 91898 at 91924 (Nov. 20, 2024)); Ex. 1002, 228–284. Petitioner also shows that the applicant did not respond to the Examiner’s request that the applicant specifically point out “any particular reference or portion of a reference in the [IDS] which the examiner should take [sic] pay particular attention to.” Ex. 1002, 174, 295– 302.” slip op. at 13
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“Patent Owner is likely correct that the ITC would not have been inclined to grant a stay if one had been requested at the time the Institution Decision issued. Moreover, the ITC conducted a full evidentiary hearing a month after the Institution Decision issued, and the target date for the ITC’s final determination is several months before the projected statutory deadline for the Board’s final written decision. PO Remand Br. 7. Accordingly, we determine that Fintiv factor 1 weighs in favor of discretionary denial. See also Klein Tools, Inc. v. Milwaukee Electric Tool Corp., IPR2024-01400, Paper 22 at 2 (PTAB June 9, 2025) (Acting Director Stewart determining that Fintiv factor 1 weighs in favor of discretionary denial when the ITC investigation is unlikely to be stayed, the ITC already conducted a full evidentiary hearing, and the ITC final determination is expected to issue six months before the statutory deadline for the Board’s final written decision).” slip op. at 19
Discretionary denialcites PhillipsPatents in suitUS 11,925,202 - PTAB · Jun 25, 2025 · IPR2024-01406 · APJ Jo-Anne M Kokoski · IPR · Remand
On remand, the Board denied institution of review of claims 1, 3, 4, 8–13, and 15 under § 314(a), finding the Fintiv factors favored discretionary denial.
RulingsRemand decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“stay or evidence exists that one may be granted if a proceeding is instituted.” Fintiv, Paper 11 at 6. A stay of litigation pending resolution of an inter partes review allays concerns about inefficiency and duplication of efforts, and strongly weighs against exercising our authority to deny institution. Fintiv, Paper 11 at 6. The Guidance Memo states that “the Board will apply the Fintiv factors when there is a parallel proceedings at the International Trade Commission.” Guidance Memo 2. Patent Owner asserts that a stay of the ITC Investigation had not been requested at the time of the Institution Decision,7 and argues that “the ITC does not stay investigations pending IPR.” PO Supp. Br. 4. Patent Owner also notes that the Institution Decision issued “just days before the ITC evidentiary hearing.” Id. Accordingly, Patent Owner argues that this factor favors denial. Id. Patent Owner is likely correct that the ITC would not have been inclined to grant a stay if one had been requested at the time the Institution Decision issued. Moreover, the ITC conducted a full evidentiary hearing less than three weeks after the Institution Decision issued, and the target date for the ITC’s final determination is four months before the statutory deadline for the Board’s final written decision. PO Supp. Br. 5. Accordingly, we” slip op. at 9
Discretionary denialPatents in suitUS 11,925,202 - Innoscience America, Inc. v. Infineon Technologies Americas Corp.Institution deniedPTAB · May 16, 2025 · IPR2025-00010 · APJ Michelle N Wormmeester · IPR · Institution
The Board denied institution of IPR challenging claims 1–14, exercising § 314(a) discretion under Fintiv because the balance of factors favored denial.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“2. Factor 2: ITC Final Determination Date Fintiv provides that an ITC trial date that is earlier than the Board’s projected statutory deadline for a final written decision may favor discretionary denial if the ITC is going to decide the same or substantially similar issues to those presented in the petition. Fintiv, Paper 11 at 8. The Guidance Memo further provides that “the Board is more likely to deny institution where the ITC’s projected final determination date is earlier than the Board’s deadline to issue a final written decision.” Guidance Memo 2. Here, the ITC has set the target date for its final determination to March 2, 2026. Ex. 2010, 3 (ITC Order Amending the Procedural Schedule). Our final written decision would be due almost three months later, in late May 2026, should we institute inter partes review.” slip op. at 8
Discretionary denialPatents in suitUS 9,070,755 - Solus Advanced Materials Co, Ltd. v. SK Nexilis Co., Ltd.Institution deniedPTAB · Apr 22, 2025 · IPR2024-01460 · APJ Jon B Tornquist · IPR · Institution
The Board denied institution of review of claims 1–11 because the Fintiv factors, including the early trial date and close merits case, favored discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied fintivInstitution denied
“whether to institute an inter partes review. Applying the standard set forth in 35 U.S.C. § 314(a), we may not institute an inter partes review unless the information presented in the petition “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.” 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 stated below, we exercise our discretion not to institute an inter partes review. A. Real Parties-in-Interest” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“Board’s projected statutory deadline to issue a final written decision. Fintiv, Paper 11 at 9. “If the court’s trial date is at or around the same time as the projected statutory deadline . . . the decision whether to institute will likely implicate other factors.” Id. Conversely, “[i]f the court’s trial date is earlier than the projected statutory deadline,” this has generally weighed “in favor of exercising authority to deny institution.” Id.” slip op. at 15
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached
“Petition under 35 U.S.C. § 325(d) because the same or substantially the same art and arguments were before the Examiner during prosecution and Petitioner’s has not demonstrated that the Examiner erred in a material manner when allowing the claims. Pet. 17–18. Given our discretionary denial of the Petition in view of the Fintiv factors, we do not address Petitioner’s further arguments with respect to § 325(d).” slip op. at 32
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner applies Petitioner’s recited level of ordinary skill in the art for purposes of its Preliminary Response. Prelim. Resp. 4. Upon review of the parties’ arguments and the prior art of record, we adopt Petitioner’s unopposed definition of the ordinarily skilled artisan for purposes of this decision as it appears consistent with the disclosures of the ’090 patent and the prior art of record. C. Claim Construction” slip op. at 9
§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,480,090 - Duplo U.S.A. Corporation v. Mgi Digital Technology S.A.Institution deniedPTAB · Dec 5, 2023 · IPR2023-00936 · APJ Kimberly Mcgraw · IPR · Institution
The Board denied institution for claims 1, 2, 4, 9, 10, and 12 under § 314(a), finding the Fintiv factors favored discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“G. Balancing the Fintiv Factors A holistic balancing of the Fintiv factors weighs in favor of discretionary denial. As discussed above, only factor 4 weighs somewhat against discretionary denial. The remaining factors either do not support institution (factors 1 and 6) or weigh in favor of denial of institution (factors 2, 3, and 5). Moreover, Petitioner has not submitted a Sotera-type stipulation or shown compelling evidence of unpatentability that would make discretionary denial inappropriate under the Guidance Memo. Given the late stage of the parallel District Court Proceeding, the substantial investment by the parties in that proceeding, and the lack of strong countervailing considerations, the evidence of record favors exercising our discretion to deny institution of an inter partes review.” slip op. at 32
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Not reached
“As such, even if we were to determine that Petitioner’s Nagashima- based challenges met the lower threshold for instituting an inter partes review (a question we need not reach in our Fintiv analysis), these challenges, if unrebutted in trial, do not plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” slip op. at 25
- Skill levelSkill level petitioner adoptedDecided for petitioner
“1. Level of Ordinary Skill in the Art The level of ordinary skill is a factor to be considered when determining obviousness. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). Petitioner states that a person of ordinary skill in the art would have had a bachelor’s degree in mechanical or electrical engineering or a related field and at least two years of practical experience with printer technology. Pet. 5. Petitioner further asserts that more relevant experience may compensate for less formal education and that more relevant formal education may compensate for less practical experience. Id. (citing Ex. 1003 ¶¶ 27–28). Patent Owner does not propose its own definition but does assert that Petitioner has understated the level of ordinary skill in the art. Prelim. Resp. 9. For the purpose of this Decision, we apply Petitioner’s definition, because Patent Owner presents no countervailing definition and because we find Petitioner’s statement of the level of ordinary skill in the art adequate and supported on this record. We also note that our analysis would not change if we were to apply a higher level of skill in the art.” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“We agree with Patent Owner that Petitioner has not sufficiently shown that Nagashima discloses or suggests the claimed covering ink ordroplets of covering ink and, thus, Petitioner’s Nagashima-based grounds fail to present a compelling, meritorious, challenge. First, we disagree with Petitioner’s assertion that the ’806 patent defines covering ink as synonymous with “viscous product” so that “covering ink” broadly covers any “viscous product” including printing ink. See Pet. 8–9 (citing Ex. 1001, 3:21–22; Ex. 1003 ¶ 57–61). Rather, the ’806 patent states that “[i]n the present document, the terms of ‘covering ink’, ‘viscous product’ and ‘varnish’ are synonyms.” Ex. 1001, 3:21–22. We understand this sentence to mean that when ’806 patent uses the term “viscous product,” that the term is synonymous with “covering ink” within the ’806 patent, but is not intended to broadly mean that “covering ink” encompasses the entire universe of viscous products. We also determine that there are substantial issues with Petitioner’s argument that Nagashima discloses or suggests using covering ink in its device. Petitioner’s argument that Nagashima does not limit its device to any particular ink and identifies ink having different characteristics, including viscosity, does not plainly lead to a conclusion that Nagashima discloses use of covering ink. See Pet. 8. Nor does Petitioner’s argument that because some inkjet printers have been used to deposit covering ink, and those inkjet printers and Nagashima’s device both involve similar piezo-type ink ejection heads for ejecting different ink types and viscosities, plainly lead to a conclusion that a POSITA would have found it obvious to use Nagashima to apply a covering ink. See Pet. 9–10; Ex. 1003 ¶¶ 62–66; see” slip op. at 24
§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 8,783,806 - Duplo U.S.A. Corporation v. Mgi Digital Technology S.A.Institution deniedPTAB · Dec 4, 2023 · IPR2023-00935 · APJ Kimberly Mcgraw · IPR · Institution
The Board denied institution of IPR challenging claims 1, 7, 12, and 18 under § 314(a), weighing the Fintiv factors in favor of discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“G. Balancing the Fintiv Factors A holistic balancing of the Fintiv factors weighs in favor of discretionary denial. As discussed above, only factor 4 weighs somewhat against discretionary denial. The remaining factors either do not support institution (factors 1 and 6) or weigh in favor of denial of institution (factors 2, 3, and 5). Moreover, Petitioner has not submitted a Sotera-type stipulation or shown compelling evidence of unpatentability that would make discretionary denial inappropriate under the Fintiv Memo. Given the late stage of the parallel district court proceeding, the substantial investment by the parties in that proceeding, and the lack of strong countervailing considerations, the evidence of record favors exercising our discretion to deny institution of an inter partes review.” slip op. at 27
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“§ 42.4(a), we may only institute an inter partes review when “the information presented in the petition . . . and any 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); see also 37 C.F.R. § 42.108(c). However, institution of inter partes review 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.”) After considering the parties’ submissions and the evidence of record, we determine it is appropriate to exercise our discretion and decline to institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“1. Level of Ordinary Skill in the Art The level of ordinary skill is a factor to be considered when determining obviousness. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). Petitioner states that a person of ordinary skill in the art would have had a bachelor’s degree in mechanical or electrical engineering or a related field and at least two years of practical experience with inkjet and related printer technology. Pet. 4. Petitioner further asserts that more relevant experience may compensate for less formal education and that more relevant formal education may compensate for less practical experience. Pet. 5 (citing Ex. 1003 ¶¶ 27–29). Patent Owner does not propose its own definition but does assert that Petitioner has understated the level of ordinary skill in the art. Prelim. Resp. 9–10. For the purpose of this Decision, we apply Petitioner’s definition. We also note that our analysis would not change if we were to apply a higher level of skill in the art.” slip op. at 17
Discretionary denialcites GrahamPatents in suitUS 8,506,031 - PTAB · Jul 15, 2022 · PGR2021-00030 · APJ Sheridan K Snedden · PGR · Rehearing
Patent Owner’s rehearing request was granted, and institution was denied for all challenged claims based on changed circumstances in the parallel district court proceeding under Fintiv.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“Having considered the parties’ positions and evidence of record, summarized above, we agree with Patent Owner that a rehearing of our prior institution decision is appropriate due to the changed circumstances of: (1) the statutory disclaimer of claims 6–8 of the ’039 patent, (2) Patent Owner’s request for adverse judgment of related proceeding PGR2021-00042, and (3) the additional investment in the parallel proceeding by the district court and the parties, including the completion of a jury trial that resulted in a jury verdict not finding invalidity of the challenged claims. We further agree with Patent Owner that “[c]ontinuing with this proceeding would result in duplicative efforts and potentially conflicting results between the district court and the Board.” Reh’g Req. 9. It is the combination of these changed circumstances, rather than any one of them individually, that compels the result we reach.” slip op. at 7
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“In considering the parties’ positions and the evidence of record, we note that we have been instructed not to exercise discretion to deny a petition when “the information presented at the institution stage presents a compelling unpatentability challenge.” Guidance Memo 4–5. We previously described “Petitioner’s argument that the claims lack enablement” as presenting “strong merits.” Paper 17, 3. Despite that determination, we believe the record as it stands currently does not “present[] a compelling unpatentability challenge” on the lack-of-enablement issue. Guidance Memo 4–5. The district court already has substantially completed its review of the enablement issue, and a jury has determined that the claims do not lack enablement. Given this new information, we cannot conclude that Petitioner’s enablement case is compelling.” slip op. at 6
- Adverse judgmentOther
Discretionary denialPatents in suitUS 10,808,039 - Daiichi Sankyo, Inc. / Astrazeneca Pharmaceuticals, LP v. Seagen Inc.Institution deniedPTAB · Jun 24, 2021 · PGR2021-00042 · APJ Sheridan K Snedden · PGR · Institution
The Board denied institution of PGR on claims 6–8 under § 324(a), finding that the Fintiv factors favored discretionary denial despite potential merit in the enablement challenge.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied
“parties. We recognize that many legitimate reasons may lead a party not to file a motion to stay a parallel proceeding prior to the Board’s institution decision, including because such a motion may be viewed as premature. Be that as it may, our precedential guidance instructs us to consider whether the court has granted a stay of the parallel proceeding, or whether evidence exists that a stay may be granted upon institution. Fintiv Order at 5–6. As it stands, the record lacks sufficient evidence to suggest that a stay has been granted, or may be granted in the future. It is a judge who determines whether to grant a stay based on the facts of each specific case as presented in the briefs by the parties. We decline to infer, based on actions taken in different cases with different facts, how the district court judge would rule should a stay be requested in the Texas Litigation. For these reasons, we determine that the facts underlying this factor are neutral.” slip op. at 14
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“35 U.S.C. § 324(c); 37 C.F.R. § 42.4(a). The standard is set forth in § 324(a), which provides that a post-grant review shall not be instituted unless “the Director determines that the information presented in the petition filed under section 321, if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.”” slip op. at 2
Discretionary denialPatents in suitUS 10,808,039 - Daiichi Sankyo, Inc. / Astrazeneca Pharmaceuticals, LP v. Seagen Inc.Institution deniedPTAB · Jun 24, 2021 · PGR2021-00030 · APJ Sheridan K Snedden · PGR · Institution
The Board denied institution of post-grant review for claims 1–5, 9, and 10 under § 324(a), finding the Fintiv factors favored discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“Additionally, the Board’s precedential Fintiv Order identifies several factors to be considered when analyzing issues related to the Director’s discretion to deny institution, with the goal of balancing efficiency, fairness, and patent quality. See Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5‒6 (PTAB Mar. 20, 2020) (precedential) (“the Fintiv Order”). These factors include: 1) whether a stay exists or is likely to be granted if a” slip op. at 10
Discretionary denialPatents in suitUS 10,808,039 - U.S. Venture, Inc. v. Sunoco Partners Marketing & Terminals L.P.Rehearing deniedPTAB · Dec 17, 2020 · IPR2020-00728 · APJ Brent M Dougal · IPR · Rehearing
The Board denied rehearing, leaving in place its denial of institution for claims 16–17 based on the Fintiv factors and its § 314(a) discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“When rehearing a decision on institution, the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if the decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). The burdens and requirements of a request for rehearing are stated in 37 C.F.R. § 42.71(d): The burden of showing a decision should be modified lies with the party challenging the decision. 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. Thus, a request for rehearing is not an opportunity to present new arguments or evidence or merely to disagree with the panel’s assessment of the arguments or weighing of the evidence.” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for patent owner
“the evidence laid out an approximate time frame for when the trial would likely be held. Dec. 9 (citing Ex. 2003); see also id. at 8–9 (citing PO Resp. 35; Ex. 1026) (Discussing the Court’s Procedures and timeline for trial after the docket call). Thus, we determined that this factor favored denying institution under our analysis of the factors under Fintiv. Id. at 9.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Petitioner acknowledges that the proposed combination of the references relies on “us[ing] the cumulative totals of the flow rates of the unblended components in the Hoffman compensation process” (id.), however Patent Owner identifies that Hoffman appears to teach away from using the flow rates of the unblended components in its calculations because of the uncertainty in the flow rate of the blended line. Prelim. Resp. 19, 21– 22. Contrary to Petitioner’s position, it is not Patent Owner’s burden to show why “a person of ordinary skill in the art would be discouraged from measuring flow rates upstream for use in the Hoffman compensation process” (Reh. Req. 9), but rather, Petitioner bears the burden to show why a person of ordinary skill in the art would measure flow rates upstream for use in the Hoffman compensation process in view of the all of the teachings of the references (35 U.S.C. § 314(a) (Institution only authorized if “the information presented in the petition . . . 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.”)). Petitioner’s arguments do not show that we misapprehended or” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageNot reached
“argument concerning the construction of the term “in-line blending.” Id. at 13.” slip op. at 6
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 9,207,686
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.