- 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in the district court are more expansive and include combinations of the prior art asserted in these proceedings with unpublished system prior art, which Petitioner’s stipulation is not likely to moot.”).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 · Nov 12, 2024 · IPR2024-00886 · APJ Monica S Ullagaddi · IPR · Institution
The Board denied institution for claims 9–16 under § 314(a), finding the Fintiv factors favored denial and neither obviousness challenge presented compelling merits.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“When determining whether to exercise discretion to deny institution in 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 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”). “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” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“or Ingale in view of Jung. Pet. 18–51. For the reasons discussed below, we determine that Petitioner’s showing does not rise to the level of “compelling merits” according to the Office’s current guidance and Board precedents. CommScope at 3–4 (quoting Guidance Memo, 4) (“[W]hen determining whether there is a compelling unpatentability challenge, the Board evaluates whether the Petition presents challenges ‘in which 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.”); OpenSky Indus., LLC v. VLSI Tech. LLC, IPR2021-01064, Paper 102 at 49–50 (PTAB only ‘plainly lead to a conclusion that one or more claims are unpatentable’ . . . if it is highly likely that the petitioner would prevail with respect to at least one challenged claim”). 1. Petitioner’s Showing for Claim 9 Below we provide an element-by-element analysis of Petitioner’s obviousness showing for claim 9. After considering the evidence supporting Petitioner’s obviousness showing, and Patent Owner’s arguments and evidence as to why Petitioners’ obviousness showing is deficient, we consider whether the totality of the evidence rises to the level of compelling merits.” slip op. at 19
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“For the reasons set forth above, and even if we consider Petitioner’s proposed rationale for combining Ingale and Jung to be supported by sufficient rational underpinnings (see e.g., Pet. 24–27), neither Jung nor Ingale, either individually or in the proposed combination set forth by Petitioner teach or suggest limitation 9.6 of claim 9 so as to rise to a compelling, meritorious showing for claim 9. 4. Remaining Claims Petitioner’s arguments and evidence for independent claim 13 (Pet. 58–59) and dependent claims 10–12 and 14–16 (id. at 51–57, 59–60) are substantially similar to Petitioner’s arguments and evidence for claim 9 and are unopposed at this stage by Patent Owner (except for the issues discussed above with respect to independent claim 9) (see e.g., Prelim. Resp. 15). Accordingly, Petitioner’s showing for claims 10–16 do not differ or deviate from the showing with respect to independent claim 9 so as to rise to the level of a compelling, meritorious showing, either for independent claim 9, or any of claims 10–16.” slip op. at 32
- Skill levelSkill level petitioner adoptedOther
“At this stage in the proceeding, Patent Owner does not contest Petitioner’s definition of the POSA. Prelim. Resp. 6–7 (“For purposes of this Preliminary Response only, Patent Owner utilizes Petitioner’s proposed level of skill in the art.”). Petitioner’s description of a POSITA appears consistent with the subject matter of the ’557 patent and with the prior art of record, we apply it for purposes of this Decision. 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 16
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 11,019,557 - PTAB · Sep 30, 2021 · IPR2021-00659 · APJ Jon M Jurgovan · IPR · Institution
The Board denied institution of IPR on all challenged claims under § 314(a), finding the ITC investigation’s timing and substantial investment outweighed factors favoring institution.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“and the target date for completion of the ITC investigation is February 22, 2022. Ex. 2001, 4. Accordingly, it is likely that this proceeding will be concluded prior to trial in the District Court, but after the ITC investigation is completed. Because the ITC is scheduled to complete its investigation approximately seven-and-a-half months before the due date for the final written decision, this factor weighs in favor of exercising our discretion to deny institution.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied fintivInstitution denied
“the Petition on the merits in its Preliminary Response and we do not have the benefit of Patent Owner’s views on the merits. However, we agree with Petitioner that the Petition appears to present a reasonable likelihood that Petitioner would prevail. Considering the evidence, we determine that this factor is neutral.” slip op. at 15
Discretionary denialPatents in suitUS 10,651,333 - PTAB · May 26, 2021 · IPR2021-00095 · APJ Terrence W Mcmillin · IPR · Institution
The Board denied institution of IPR on all challenged claims under § 314(a), finding that Fintiv factors concerning the ITC investigation outweighed the factors favoring institution.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“be stayed. Although Petitioner provides examples of stayed proceedings, we are not persuaded that those examples impact this proceeding. On the other hand, the parties agree that the ITC will not stay its investigation. See Reply 2; Sur-reply 2–3. Accordingly, we weigh this factor in favor of exercising our discretion to deny institution.” slip op. at 9
Discretionary denialPatents in suitUS 10,522,707 - Cisco Systems, Inc. v. Ramot At Tel Aviv University Ltd.Institution deniedPTAB · May 15, 2020 · IPR2020-00122 · APJ Jason M Repko · IPR · Institution
The Board denied institution of review of claims 1, 2, 4, and 5 under § 314(a), finding the Fintiv factors favored denial despite the petition’s merits.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“To institute an inter partes review, we must determine “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). But the Board has discretion to deny a petition even when a petitioner meets that threshold. Id.; 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.”); Gen. Plastic Indus. Co. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 (PTAB Sept. 6, 2017) (precedential as to § II.B.4.i); NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 (PTAB Sept. 12, 2018) (precedential); Patent Trial and Appeal Board Consolidated Trial Practice Guide 64 (Nov. 20, 2019), http://www.uspto.gov/TrialPracticeGuideConsolidated (identifying considerations that may warrant exercise of this discretion).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“Because the trial date is substantially earlier than the projected statutory deadline for the Board’s final decision, this factor weighs in favor of discretionary denial.” slip op. at 8
Discretionary denialPatents in suitUS 10,033,465 - Cisco Systems, Inc. v. Ramot At Tel Aviv University Ltd.Institution deniedPTAB · May 15, 2020 · IPR2020-00123 · APJ Jason M Repko · IPR · Institution
The Board denied institution of review of claims 1 and 2 under § 314(a), finding the Fintiv factors—especially overlapping issues and the earlier trial date—weighed against institution.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“6. Conclusion All Fintiv factors weigh in favor of exercising our discretion to deny institution under § 314(a) except for one, which is neutral. We have reviewed the Petition and determine that its merits do not outweigh the Fintiv factors—especially considering the number of overlapping issues in district court, which strongly favors denial under factor 4, and the trial date, which is substantially earlier than the projected statutory deadline for the Board’s final decision. On balance, instituting would be an inefficient use of Board, party, and judicial resources. See NHK, Paper 8 at 20. Thus, efficiency and integrity of the system are best served by denying review. See Consolidated TPG at 58 (quoting 35 U.S.C. § 316(b)).” slip op. at 11
Discretionary denialPatents in suitUS 10,270,535
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.