- Samsung Electronics Co., Ltd. v. Sionyx, LLCInstitution deniedPTAB · Jun 6, 2025 · IPR2025-00065 · APJ Brian D Range · IPR · Institution
The Board denied institution of IPR challenging claims 1–44 under § 314(a), finding the Fintiv factors favoring denial outweighed the Petition’s strong merits.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“stipulation would only eliminate the District Court’s consideration of Haddad204. Despite the stipulation, the District Court would still have to consider invalidity of every claim the Petition addresses and would still have to consider the Alie, Baggenstoss, and Park references. Cf. Stellar at 4 (“Petitioner’s invalidity arguments in the district court are more expansive and include combinations of the prior art asserted in these proceedings with unpublished system prior art, which Petitioner’s stipulation is not likely to moot.”). In other words, “Petitioner’s stipulation does not ensure that [this proceeding] would be a ‘true alternative’ to the district court proceeding.” Id. at 3–4. Because of the remaining overlap between the Petition and the District Court proceeding, Fintiv factor four weighs strongly in favor of discretionary denial.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundOther
“for back side illumination (BSI), which appears to teach or suggest a textured region with surface features “located on the light incident side of the semiconductor layer and configured to interact with incident [EMR].” Pet. 22–27 (citing Ex. 1006, Fig. 5, ¶¶ 53, 68, 96; Ex. 1004 ¶¶ 39–40, 88–95, 101–107). As Petitioner and its expert explain, a person of ordinary skill in the art would have been motivated to modify Figure 5 of Alie into a BSI device because BSI devices allow more incident light to reach the semiconductor layer, resulting in more light being absorbed, an increase in the quantum efficiency, and an improvement in the signal to noise ratio. Pet. 25–26 (citing Ex. 1006 ¶¶ 68, 70; Ex. 1004 ¶¶ 39–40, 92, 95). Patent Owner argues that Alie does teach, suggest, or disclose “a textured region comprising a plurality of shallow trench isolation features.” Prelim. Resp. 9–11. But it appears Petitioner has at least shown Alie teaches or suggests this element. See discussion supra. Patent Owner further argues that Petitioner fails to present any proof that a person of ordinary skill in the art would have been motivated to modify Figure 5 of Alie into a BSI device. Id. at 11–15. But, in our view, Petitioner has provided an adequate motivation to modify Alie—so that more light will be absorbed, yielding an increase in the quantum efficiency and an improvement in the signal to noise” slip op. at 18
- Parallel petitionsNot reached
“17 Petitioner filed petitions for IPR2025-00064 and IPR2025-00065 at the same time. Both petitions address the ’682 patent but apply different art. Patent Owner also argues the second petition (IPR2025-00065) should be denied because one petition is sufficient. Patent Owner’s Response to Petitioner’s Notice Ranking Parallel Petitions, Paper 11. Because we deny institution based on Fintiv discretion, it is not necessary to reach Patent Owner’s multiple petition argument.” slip op. at 20
§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 10,347,682 - Samsung Electronics Co., Ltd. v. Sionyx, LLCInstitution deniedPTAB · Jun 6, 2025 · IPR2025-00064 · APJ Brian D Range · IPR · Institution
The Board denied institution of IPR challenging claims 1–44 under § 314(a), finding the Fintiv factors favoring denial outweighed the petition’s strong merits.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“arguments, and evidence presented in the parallel proceeding.” Fintiv at 12 (emphasis added). “[A] timely-filed Sotera stipulation . . . from a petitioner”—“that, if an IPR . . . is instituted, the petitioner will not pursue in district court . . . any ground raised or that could have been reasonably raised in the IPR”—“is highly relevant, but will not be dispositive by itself. Instead, the Board will consider such a stipulation as part of its holistic analysis under Fintiv.” March 2025 Fintiv Guidance 2–3. Here, Petitioner’s invalidity contentions in the district court case cover” slip op. at 14
- Parallel petitionsNot reached
“18 Petitioner filed petitions for IPR2025-00064 and IPR2025-00065 at the same time. Both petitions address the ’682 patent but apply different art. Patent Owner also argues the second petition (IPR2025-00065) should be denied because one petition is sufficient. Patent Owner’s Response to Petitioner’s Notice Ranking Parallel Petitions, Paper 11. Because we deny institution based on Fintiv discretion, it is not necessary to reach Patent Owner’s multiple petition argument.” slip op. at 22
Discretionary denialcites KSRPatents in suitUS 10,347,682 - Samsung Electronics Co., Ltd. v. Sionyx, LLCInstitution deniedPTAB · May 21, 2025 · IPR2025-00161 · APJ Monica S Ullagaddi · IPR · Institution
The Board denied institution of IPR challenging claims 1–18 under § 314(a), concluding that the Fintiv factors, viewed holistically, favored discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied fintivInstitution denied
“The standard for institution is set forth in 35 U.S.C. § 314, which provides that an inter partes review may not be instituted unless the information presented 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.” 35 U.S.C. § 314 (2019); see also 37 C.F.R § 42.4(a) (2019) (“The Board institutes the trial on behalf of the Director.”). Upon consideration of the parties’ contentions and the evidence of record, we exercise our discretion to deny institution.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“view of a parallel proceeding, we consider the following factors: 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 7 Japanese Unexamined Patent Application Publication No. 2009–188316 A, published Aug. 20, 2009 (Ex. 1011). A certified translation, to which we cite, is provided (Ex. 1012, “Yamada”). 8 E. Fred Schubert, LIGHT-EMITTING DIODES, 2nd ed., 163–190, 2006 (Ex. 1013, “Schubert”). discretion, including the merits. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5–6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”). “These factors relate to 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.” Id. 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. We consider each of these factors below.” slip op. at 4
Discretionary denialPatents in suitUS 11,721,714 - PTAB · Feb 6, 2025 · IPR2024-00324 · APJ Michelle N Wormmeester · IPR · Rehearing
The Board denied Comcast’s rehearing request and left in place denial of institution after finding no abuse of discretion in its construction and compelling-merits analysis.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision [i]s based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus., Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988). “The burden of showing that a decision should be modified lies with the party challenging the decision.” Patent Trial and Appeal Board Consolidated Trial Practice Guide 90 (Nov. 2019) (hereinafter, “CTPG”).5 In its request for rehearing, the dissatisfied party must (1) “specifically identify all matters the party believes the Board misapprehended or overlooked” and (2) identify the place “where each matter was previously addressed.” 37 C.F.R. § 42.71(d); CTPG 90.” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“discretion to deny institution due to the advanced state of parallel litigation, taking into consideration the six factors identified in Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential), as well as applying guidance set forth in a Memorandum regarding the “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation” issued by the Director of the U.S. Patent and Trademark Office (hereinafter, “Guidance Memo”).6 Inst. Dec. 6–43. We determined that the first five Fintiv factors favor discretionary denial,7 and that the Petition presents compelling evidence of unpatentability as to independent claims 1, 12, and 17 under the sixth Fintiv factor. Id. at 15–16, 23–43. Because “the PTAB will not deny institution based on Fintiv if there is compelling evidence of unpatentability,” we declined to exercise our discretion to deny and instituted trial. Guidance Memo 5; Inst. Dec. 15–16. In our Rehearing Decision, however, we agreed with Patent Owner that we erred in determining the claim terms “first format” and “second format” are not limited to different formats, and determined that the proper construction of these claim terms indeed requires the two formats to be different formats. Reh’g Dec. 5–9, 19. Applying the proper construction, we further determined that none of Petitioner’s asserted challenges presents compelling merits of unpatentability as to any claim of the ’751 patent, 6 Available at https://www.uspto.gov/sites/default/files/documents/interim_ proc_discretionary_denials_aia_parallel_district_court_litigation_memo_20 220621_.pdf. 7 Our analysis of the first five Fintiv factors in our First Institution Decision remains undisturbed on rehearing. contrary to our initial determination in the Institution Decision. Id. at 19–20. Having determined that the first five Fintiv factors favor discretionary denial, and that the Petition does not meet the compelling merits standard of the Guidance Memo under the sixth Fintiv factor, we modified our decision and denied institution on rehearing. Id. at 20.” slip op. at 4
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer foundDecided for patent owner
“Contrary to Petitioner’s position, Patent Owner met its burden of showing that our Institution Decision should be modified. In our Institution Decision, we relied on claim differentiation when we determined that claim 1 is not limited to different first and second formats. Inst. Dec. 31. We did not consider the prosecution history, which was part of the record. See Phillips v. AWH Corp., 415 F.3d 1303, 1317 (Fed. Cir. 2005) (“[W]e have held that a court ‘should also consider the patent’s prosecution history, if it is in evidence.’”). As we noted in our Rehearing Decision, however, the Federal Circuit has explained that “[t]he prosecution history modifies the scope of a claim term if ‘the patentee distinguished that term from prior art on the basis of a particular embodiment, expressly disclaimed subject matter, or described a particular embodiment as important to the invention.” Reh’g Dec. 8 (quoting Sentry Protection Prods., Inc. v. Eagle Mfg. Co., 400 F.3d 910, 915 (Fed. Cir. 2005)). The Federal Circuit also has explained that “[a]lthough claim differentiation is a useful analytic tool, it cannot . . . relieve any claim of limitations imposed by the prosecution history.” Id. at 13 (quoting Fenner Invs., Ltd. v. Cellco P’Ship, 778 F.3d 1320, 1327 (Fed. Cir. 2015)). In other words, we erred in not considering the prosecution history, which led to our erroneous conclusion that claim 1 is not limited to different first and second formats. See Ex. 1104, 170 (prosecution history). Our Institution Decision was based on this erroneous conclusion of law, as Patent Owner argued, and we modified it accordingly.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“claim 1. As discussed above with respect to limitation 1D, Petitioner asserted that its proposed combination of Danciu and Mahajan would have provided a system where “Danciu’s remote control would translate commands associated with a first type of media playing application to a generic format, transmit them to the controlled device, which would translate them to a command associated with a second type of media playing application for execution.” Reh’g Dec. 12–13 (quoting Pet. 31). In other words, both Danciu’s remote control and controlled device translate commands. With respect to claim 5, Petitioner asserted that Mahajan’s abstraction module could operate at Danciu’s server. Pet. 43. Even if Mahajan’s abstraction module (which translates commands) could operate at Danciu’s server, Petitioner does not adequately explain why an ordinarily skilled artisan would have had reason to modify Danciu’s system to locate Mahajan’s abstraction module at the server, especially where both Danciu’s remote control and controlled device already translate commands. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[T]here must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”). Petitioner does not point to anything in its analysis of claim 5 that demonstrates we misapprehended or overlooked a matter.” slip op. at 15
Claim construction§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 11,048,751 - Comcast Cable Communications, LLC v. Touchstream Technologies, Inc.Rehearing grantedPTAB · Oct 9, 2024 · IPR2024-00324 · APJ Michelle N Wormmeester · IPR · Rehearing
Patent Owner’s rehearing request was granted; the Petition was denied and no trial instituted because the challenges did not meet the compelling-merits standard under Fintiv.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision [i]s based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus., Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988). “The burden of showing that a decision should be modified lies with the party challenging the decision.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). In its request for rehearing, the dissatisfied party must (1) “specifically identify all matters the party believes the Board misapprehended or overlooked” and (2) identify the place “where each matter was previously addressed.” 37 C.F.R. § 42.71(d); Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,768.” slip op. at 3
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalTerm construed board ownDecided for patent owner
“Our reviewing court has explained that “[t]he prosecution history modifies the scope of a claim term if ‘the patentee distinguished that term from prior art on the basis of a particular embodiment, expressly disclaimed subject matter, or described a particular embodiment as important to the invention.’” Sentry Protection Prods., Inc. v. Eagle Mfg. Co., 400 F.3d 910, 915 (Fed. Cir. 2005) (quoting CCS Fitness, Inc. v. Brunswick Corp., 228 F.3d 1359, 1366–67 (Fed. Cir. 2002)).” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“discretion to deny institution due to the advanced state of parallel litigation, taking into consideration the six factors identified in Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential), as well as applying guidance set forth in a Memorandum regarding the “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation” issued by the Director of the U.S. Patent and Trademark Office (hereinafter, “Guidance Memo”).5 Inst. Dec. 6–43. We determined that the first five Fintiv factors favor discretionary denial,6 and that the Petition presents compelling evidence of unpatentability as to independent claims 1, 12, and 17 under the sixth Fintiv factor. Id. at 15–16, 23–43. Because “the PTAB will not deny institution based on Fintiv if there is compelling evidence of unpatentability,” we declined to exercise our discretion to deny. Guidance Memo 5; Inst. Dec. 15–16.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“those arguments. See Inst. Dec. 45–47. As to Petitioner’s arguments on the claimed first and second formats of limitation 1D in particular, we found the record provided “some support” for Petitioner’s position that “it would have been obvious to a [person of ordinary skill in the art] that one or more RTS Media Abstraction Modules could operate at a server, such as in [Aldrey’s] Service Provider Network 103,” even though Petitioner asserted that Mahajan teaches command conversion at the client. Id. at 45–46 (citing Pet. 66–67). Yet assuming Mahajan’s RTS Media Abstraction Module could have operated at a server, as Petitioner argued, it is not readily apparent why an ordinarily skilled artisan would have considered locating the RTS Media Abstraction Module at a server based on Mahajan’s disclosure of command conversion at a client. See also Pet. 66 (“[I]t would have been obvious to a [person of ordinary skill in the art] that the RTS Media Abstraction Module could be located on the client or server.” (emphasis added)). Nor did Petitioner adequately explain why an ordinarily skilled artisan would have considered locating Mahajan’s RTS Media Abstraction Module at a server. We note Petitioner further argued that combining Mahajan and Aldrey would have provided a system where “Aldrey’s end terminal would translate commands associated with a first type of media playing application to a command associated with a second type of media playing application on a STB.” Pet. 68; see also id. at 67 (“Mahajan’s server-command teachings could be implemented on Aldrey’s end terminal remote control.”). Arguing that Aldrey’s end terminal would translate commands seems inconsistent with Petitioner’s earlier argument for locating command conversion at Aldrey’s network service provider. See id. at 66–68. Moreover, it is not readily apparent how command translation by Aldrey’s end terminal––rather than Aldrey’s network service provider––teaches or suggests the format of a command sent from the end terminal to the network service provider is different from the format of a command sent from the network service provider to the STB. Petitioner did not close these logical gaps, leaving its case short of compelling.” slip op. at 18
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 11,048,751 - Comcast Cable Communications, LLC v. Touchstream Technologies, Inc.Institution deniedPTAB · Jul 26, 2024 · IPR2024-00326 · APJ Matthew S Meyers · IPR · Institution
The Board denied institution under § 314(a) based on Fintiv, finding that most factors favored denial and the obviousness challenges did not meet the compelling-merits standard.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“The second, third, and fifth Fintiv factors favor denial. The first factor is neutral, and only the fourth factor weighs slightly against denial. Thus, we determine that the first five Fintiv factors favor discretionary denial, and as such, we assess compelling merits. CommScope, Paper 23 at 5 (“In circumstances where, however, the Board’s analysis of Fintiv factors 1–5 favors denial of institution, the Board shall then assess compelling merits.”). The compelling merits standard is met if “the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Guidance Memo 4. A challenge can only meet this standard “if it is highly likely that the petitioner would prevail with respect to at least one challenged claim.” OpenSky Indus., LLC v. VLSI Tech. LLC, IPR2021-01064, Paper 102 at 49 (PTAB Oct. 4, 2022) (precedential) (“OpenSky”).” slip op. at 14
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached
“IV. DISCRETIONARY DENIAL UNDER 35 U.S.C. § 325(D) Patent Owner also argues that we should exercise our discretion to deny institution of inter partes review in this case under 35 U.S.C. § 325(d) because “Mahajan and Danciu constitute the same or substantially the same art that has already been considered by the Patent Office.” Prelim. Resp. 42. However, because we will not be instituting an inter partes review based on our discretion to deny the Petition under § 314(a), we need not determine whether it would be appropriate to discretionarily deny the Petition under § 325(d).” slip op. at 24
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentable
“the compelling merits standard, not the “reasonable likelihood” standard of § 314(a). We agree with Patent Owner that Petitioner does not show that Mahajan discloses or renders obvious the converted commands limitations of the claims. Particularly, all of the claims require that a media receiver (or computing device) receives a set of commands that is recognizable by the first type of media application and is converted via an API adapter to be recognizable by the first type of media playing application. Petitioner’s reliance on Mahajan’s Figure 3 for disclosing this limitation is not persuasive. Pet. 12–13, 39–41; Ex. 1102 ¶¶ 178–179, 182. Mahajan’s Figure 3, with Patent Owner’s annotations added coloring for different platforms and different commands, is reproduced below. Prelim. Resp. 28. Mahajan’s Figure 3, reproduced above with Patent Owner’s added coloring, shows that user-commands 306A–I (red) for server 202’s media platform are genericized by server 202’s RTS media abstraction module 210 (orange) using RTS mapping table 302 and corresponding generic commands 308A–I, 310A–I (grey) are sent to client 204’s RTS media abstraction module 214 (blue), which then converts the generic commands into platform-specific media commands 312A–I (green) for the client 204’s media platform. Ex. 1114 ¶¶ 35–43. More particularly, Mahajan discloses that its “RTS abstraction module 210 can translate the intercepted platform specific media commands into generic or abstracted media commands.” Ex. 1114 ¶ 36 (emphasis added). Next, “[t]he generic media commands can be sent from the server [202]’s RTS media abstraction module 210 to the client [204]’s RTS media abstraction module 214.” Id. Then, “[t]he client [204]’s RTS media abstraction module 214 can translate the generic media commands . . . into media commands that are specific to the client [204]’s media platform 212.” Id. Mahajan also discloses that “server [202]’s RTS media abstraction module 210 can receive media commands that are specific to the server [210]’s media platform 208.” Id. ¶ 37 (emphasis added). Thus, only media commands 312A–I (green) are specific to client 204’s media platform 212, not commands 306A–I, nor commands 308A–I, nor commands 310A–I. See id. ¶¶ 39–41. It appears that Petitioner recognizes such by stating that “Mahajan’s server translates specific commands of a first type to genericized commands, the genericized commands are transmitted, and then Mahajan’s client translates those generic commands to specialized commands of a second type.” Pet. 12–13 (citing Ex.1114 ¶¶ 35–36, Figs. 1–2) (emphasis added); see also Prelim. Resp. 30 (citing Pet. 34–35, 59, arguing Petitioner concedes Mahajan’s RTS Media Abstraction module of the client converts the commands received by the client from the server). With these disclosures, we agree with Patent Owner that any conversion of generic commands into platform-specific media commands for Mahajan’s client 204’s media platform 212 (as colorized green in Figure 3 by Patent Owner) is performed on the client 204 side, not on the server 202 side and thus, “Mahajan does not disclose the claimed component receiving a set of converted commands—i.e., commands that have already been converted when they are received.” Prelim. Resp. 27–28. We further agree with Patent Owner’s assessment that “Mahajan teaches that the client receives the generic commands alleged to be in a universal format; it does not disclose commands that are receive[d] in a first format that corresponds to [or is recognizable by] the first type of media playing application, as the claims recite.” Id. at 28; see Pet. 29–31, 39, 41; Ex. 1114 ¶¶ 36, 63. Petitioner appears to agree by stating that in regard to Mahajan’s teachings, 1) commands for a type of media playing application on the server are received at Mahajan’s server, 2) the commands are translated into a universal command, 3) the universal command is transmitted to the client, 4) the client re-translates the universal command, and 5) the new specific command is executed. Pet. 31 (citing Ex. 1114 ¶¶ 35–36, Figs. 1, 2; Ex. 1102 ¶ 159); see also Prelim. Resp. 29 (citing Ex. 1114 ¶¶ 13–14, 63).” slip op. at 20
§ 103 obviousnessDiscretionary denialPatents in suitUS 11,086,934 - Comcast Cable Communications, LLC v. Touchstream Technologies, Inc.Institution deniedPTAB · Jul 26, 2024 · IPR2024-00325 · APJ Matthew S Meyers · IPR · Institution
The Board denied institution under Fintiv because factors 2, 3, 5, and 6 favored denial; factor 1 was neutral and factor 4 weighed slightly against denial.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“The second, third, and fifth Fintiv factors favor denial. The first factor is neutral, and only the fourth factor weighs slightly against denial. Thus, we determine that the first five Fintiv factors favor discretionary denial, and as such, we assess compelling merits. CommScope, Paper 23 at 5 (“In circumstances where, however, the Board’s analysis of Fintiv factors 1–5 favors denial of institution, the Board shall then assess compelling merits.”). The compelling merits standard is met if “the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Guidance Memo 4. A challenge can only meet this standard “if it is highly likely that the petitioner would prevail with respect to at least one challenged claim.” OpenSky Indus., LLC v. VLSI Tech. LLC, IPR2021-01064, Paper 102 at 49 (PTAB Oct. 4, 2022) (precedential) (“OpenSky”).” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“the compelling merits standard, not the “reasonable likelihood” standard of § 314(a). We agree with Patent Owner that Petitioner does not show that Redford discloses or renders obvious the converted commands limitations of the claims. Particularly, all of the claims require that a media receiver (or computing device) receives a set of commands that is recognizable by the first type of media application and is converted (via an API adapter) to be recognizable by the first type of media playing application. To the extent that Petitioner relies on Redford’s Figure 11H for disclosing this limitation, such reliance is unavailing. Pet. 27, 40. Redford’s Figure 1H is reproduced below.” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Petitioner does not explain how Redford’s Authority Server 282 of Figure 2B or Redford’s computer system 250 of Figure 3A converts the command so that the command is received by Redford’s set-top or internetenabled television 303 of Figure 3A, or how it would have been obvious to one of ordinary skill in the art to modify Redford’s system to have done so. In short, we have reviewed Petitioner’s contentions that Redford’s VideoPlay is a command that is converted at computer system 250 and that the VideoPlay command is sent to and received by television 303, but do not find such contentions supported by the cited disclosure of Redford. Pet. 28 (citing Ex. 1002 ¶ 159); id. at 40 (citing Ex. 1002 ¶ 186), id. at 51–52 (citing Ex. 1002 ¶¶ 227–228); Ex. 1005:40:56–41:2. Much of Petitioner’s contentions and Mr. Lett’s testimony rely on Redford’s disclosure of its settop API (Ex. 1005, 40:56–58), but neither Petitioner nor Mr. Lett provides sufficient evidence to show that Redford’s API converts the command at computer system 250 or at server authority 282 such that a converted command is received by television 303, as the claims require. Id. The addition of Bartfeld and/or Gonze does not remedy this deficiency. Petitioner relies on Bartfeld for teaching “creating an assigned unique identifier on a television for use by a telephone device of a user.” Pet. 16 (citing Ex. 1002 ¶ 139). Petitioner relies on Gonze for teaching that it was known that “display devices were enabled with the capability to receive information concerning any one of a plurality of media playing applications.” Id. at 30 (citing Ex. 1002 ¶ 166). Thus, Petitioner does not explain how Bartfeld or Gonze remedies the above-discussed deficiencies of Redford.” slip op. at 20
- Skill levelOther
§ 103 obviousnessDiscretionary denialPatents in suitUS 11,086,934 - Comcast Cable Communications, LLC v. Touchstream Technologies, Inc.Institution deniedPTAB · Jul 24, 2024 · IPR2024-00323 · APJ Michelle N Wormmeester · IPR · Institution
The Board denied institution of review of claims 1–20, finding the Fintiv factors favored denial and the petition lacked compelling merits; it also denied based on multiple petitions.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“The second, third, and fifth Fintiv factors favor denial. The first factor is neutral, and only the fourth factor weighs against denial. Thus, we determine that the first five Fintiv factors favor discretionary denial, and we now assess compelling merits. CommScope, Paper 23 at 5 (“In circumstances where, however, the Board’s analysis of Fintiv factors 1–5 favors denial of institution, the Board shall then assess compelling merits.”). The compelling merits standard is met when “the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Guidance Memo 4. A challenge can only meet this standard “if it is highly likely that the petitioner would prevail with respect to at least one challenged claim.” OpenSky Indus., LLC v. VLSI Tech. LLC, IPR2021-01064, Paper 102 at 49 (PTAB Oct. 4, 2022) (precedential) (“OpenSky”).” slip op. at 13
- Parallel petitionsDenied
“and purporting to explain differences between the petitions. Paper 3. Petitioner ranks this Petition above the petition in IPR2024-00324. Id. at 1. As discussed above, we do not find that the instant Petition meets the compelling merits standard, but we find that the petition in IPR2024-00324 does meet this standard for at least one claim. Petitioner also argues that certain references are prior art under 35 U.S.C. § 102(e) that can be antedated by Patent Owner. Paper 3 at 1–2. Petitioner argues that Redford predates the ’751 patent’s earliest priority date by more than a year whereas one of the references in IPR2024-00324 only predates the ’751 by about six weeks. Id. at 2. As Patent Owner points out, however, Petitioner asserts a challenge in IPR2024-00324 that relies only on prior art under § 102(b), which cannot be predated. Paper 10 at 2. Thus, the petition in IPR2024-00324 also provides an advantage in the event of a priority dispute.” slip op. at 23
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied fintivInstitution denied
“In view of the foregoing, we determine that Petitioner’s obviousness challenges based on Redford do not meet the compelling merits standard. Petitioner does not rely on Bartfeld or Gonze to teach the “message” limitations. See Pet. 14–21 (relying on Bartfeld for limitations regarding a synchronization code); id. at 24–36 (relying on Gonze for limitations regarding selecting and controlling a first media player application). 7. Fintiv Determination On balance, the first five Fintiv factors favor discretionary denial, and the Petition does not meet the compelling merits standard of the Guidance Memo. Therefore, we determine that discretionary denial is appropriate in view of the related district court litigation.” slip op. at 22
- BurdenNot reached
“As noted above, our inquiry is directed to whether the Petition meets the compelling merits standard, not the “reasonable likelihood” standard of § 314(a). On this record, we agree with Patent Owner.” slip op. at 20
§ 103 obviousnessDiscretionary denialPatents in suitUS 11,048,751 - 10x Genomics, Inc. v. President And Fellows Of Harvard CollegeInstitution deniedPTAB · Mar 7, 2024 · IPR2023-01299 · APJ Tina E Hulse · IPR · Institution
Denied institution on claims 1–12 because the Petition failed to address a disputed § 112(f) construction and the Fintiv factors favored discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“II. DENIAL UNDER 37 C.F.R. § 42.104(b)(3) Our rules require that a petition set forth “[h]ow the challenged claim is to be construed” and, “[w]here the claim to be construed contains a means-plus-function or step-plus-function limitation as permitted under 35 U.S.C. [§] 112(f), the construction of the claim must identify the specific portions of the specification that describe the structure, material, or acts corresponding to each function.” 2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284, 287–88 (2011), amended 35 U.S.C. §§ 102 and 103, effective March 16, 2013. Because the ’303 Patent has an effective filing date after March 16, 2013, the AIA version of §§ 102 and 103 apply. Our decision, however, would be the same under either version. 3 Fan et al., US 10,829,814 B2, issued Nov. 10, 2020. Ex. 1005 (“Fan”). 4 Gunderson et al., Decoding Randomly Ordered DNA Arrays, 14 GENOME 870–77 (2004). Ex. 1007 (“Gunderson”). 5 Larsson et al., In situ detection and genotyping of individual mRNA molecules, 7 NAT. METHODS 395–97 (2010). Ex. 1008 (“Larsson”). 6 Bo U. Curry, US 8,765,642 B2, issued Jul. 1, 2014. Ex. 1009 (“Curry”). 37 C.F.R. § 42.104(b)(3). The Consolidated Trial Practice Guide7 (“CTPG”), which provides guidance to practitioners on our rules, further instructs that “[w]here claim language may be construed according to 35 U.S.C. § 112(f), a petitioner must provide a construction.” CTPG 45 (emphases added) (citing 37 C.F.R. § 42.104(b)(3)). The CTPG advises that a party “may choose to elaborate why § 112(f) should or should not apply to the limitation at issue.” Id. Notably, the CTPG warns that “[a] petitioner who chooses not to address construction under § 112(f) risks failing to satisfy the requirement of 37 C.F.R. § 42.104(b)(3).” Id.” slip op. at 7
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)Decided for patent owner
“Similarly, here, Petitioner asserts that the phrase “an error detection or correction system” is not governed by § 112(f) and that no construction is necessary. See Pet. 12 (“Solely for the purposes of this IPR, 10x applies Co- Plaintiff’s [(i.e., Vizgen’s)] interpretations of the 303 patent claims from the concurrent litigation.”); see also Ex. 2005, 7 (reciting Vizgen’s proposed construction: “This claim limitation is not governed by 35 U.S.C. § 112(f). No construction necessary”). Before the district court, however, Petitioner asserts that the claim phrase is subject to § 112(f), which the district court largely adopted.10 Ex. 1062, 34. Petitioner admitted the claim phrase was in dispute in the Joint Claim Construction Statement filed in district court. Ex. 2005, 4, 7 (identifying “an error detection or correction system” as a disputed claim term). Despite knowing the meaning of the claim phrase is in dispute, Petitioner did not offer a reasoned construction in the Petition. Thus, like the petitioner in Orthopediatrics, Petitioner should have provided reasons why the limitation is not governed by § 112(f) or provided an express construction of the claim phrase. See IPR2018- 01546, Paper 10 at 11. Because Petitioner has the burden to show a reasonable likelihood of prevailing in its assertion that at least one claim is unpatentable, our rules require that Petitioner substantively address any claim terms in dispute. Based on the circumstances presented here, by relying solely on Vizgen’s construction for “an error detection or correction system” that “no construction [is] necessary” without further explanation, Petitioner failed to satisfy its burden to set forth “[h]ow the challenged claim is to be construed.” 37 C.F.R. § 42.104(b)(3). Thus, we find the Petition is deficient on its face under 37 C.F.R. § 42.104(b)(3), as merely stating “no construction [is] necessary”—while knowing the construction is actually disputed under § 112(f)—is not sufficient for purposes of institution.” slip op. at 12
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“Given the coordinated schedule with the related cases, the prior denial of a motion to stay, and the lack of intent by either party to file a motion to stay, we agree with Patent Owner that it is unlikely the district court proceeding will be stayed. Thus, under the facts and circumstances of this case, we find this factor favors exercising our discretion to deny institution.” slip op. at 16
Claim constructionDiscretionary denialPatents in suitUS 11,098,303 - Google LLC v. Personalized Media Communications, LLCRehearing deniedPTAB · Nov 5, 2020 · IPR2020-00722 · APJ John F Horvath · IPR · Rehearing
The Board denied Google’s request for rehearing and left in place its denial of institution, finding no abuse of discretion in its Fintiv analysis.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Standard for Reconsideration When rehearing a decision on petition, the Board will review the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). “An abuse of discretion occurs if the decision: (1) is clearly unreasonable, arbitrary, or fanciful; (2) is based on an erroneous conclusion of law; (3) rests on clearly erroneous fact findings; or (4) involves a record that contains no evidence on which the Board could rationally base its decision.” Redline Detection, LLC v. Star Envirotech, Inc., 811 F.3d 435, 442 (Fed. Cir. 2015) (internal citations omitted). A request for rehearing “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.” 37 C.F.R. § 42.71(d). The burden of showing a decision should be modified on a request for rehearing lies with the party challenging the decision. Id.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDecided for patent owner
“Our Decision performed such an analysis, finding factor 3 favored denying institution because “the District Court and the parties have invested significant resources in the district court case on issues of claim construction and validity, including by completing expert discovery on July 8, 2020.” Dec. 8. The issuance of the 94-page claim construction order and the completion of expert discovery on validity, all done in preparation for a trial scheduled to commence less than two months after our Decision was due, is evidence that “the parallel proceeding is more advanced, a stay may be less likely, and instituting would lead to duplicative costs,” all of which are factors that “favor[] denial” because “the court and parties have invested sufficient time in the parallel proceeding to favor denial.” Fintiv, Paper 11 at 9–10.” slip op. at 7
Discretionary denialPatents in suitUS 7,747,217
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.