- Arashi Vision (U.S.) LLC D/B/A Insta360 v. Gopro, Inc.Institution deniedPTAB · Apr 28, 2025 · IPR2025-00017 · APJ Nabeel U Khan · IPR · Institution
The Board denied institution under Fintiv because the parallel ITC investigation was advanced and overlapped sufficiently with the petition.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“An inter partes review may not be instituted “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.” 35 U.S.C. § 314(a). The Board, however, has discretion to deny institution even when a petition meets that threshold. Cuozzo Speed Techs., LLC v. Lee, 579 U.S. 261, 273 (“[T]he agency’s decision to deny a petition is a matter committed to the Patent Office’s discretion.”). Having considered the arguments and record before us, we determine it is appropriate to exercise our discretion and decline to institute an inter partes review in this case.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“trial allays concerns about inefficiency and duplication of efforts.” Fintiv, 6. However, when there is a parallel district court litigation and an ITC investigation, “district court litigation is often stayed under 28 U.S.C. § 1659 pending resolution of the ITC investigation.” Id. at 7. The fact that the parallel district court litigation is stayed is, therefore, not the focus of this Fintiv factor under these circumstances. Instead, Fintiv counsels that “the parties should indicate whether the patentability disputes before the ITC will resolve all or substantially all of the patentability disputes between the parties, regardless of the stay.” Id. at 9. Here, the parallel ITC investigation is not stayed and, as we explain below in our analysis of Factor 4, there is some overlap between the patentability disputes presented here and those presented at the ITC. Petitioner argues that the district court is “not bound to any ITC decision” (Pet. Reply 2), but as Fintiv reminds us, “even though the Office and the district court would not be bound by the ITC’s decision, an earlier ITC trial date may favor exercising authority to deny institution under NHK if the ITC is going to decide the same or substantially similar issues to those presented in the petition.” Fintiv, 8.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“While Petitioner addresses all limitations of the challenged claims in its Petition, Patent Owner presents arguments under all three grounds raising issues with Petitioner’s challenges. For example, regarding the first ground, Patent Owner argues Okubo’s image cutout “does not represent a portion of a larger input image, but rather is the size of the image that is ‘picked up’ and recorded in the first instance.” Prelim. Resp. 12. Thus, according to Patent Owner, Okubo does not disclose “selecting sub-frames” as recited by limitation 1[D] of claim 1. Id. Regarding the second ground, Patent Owner argues that Okubo’s two-stage lens distortion correction process is limited to still images while Sokeila’s teachings relate to video images. Id. at 18–19. Regarding the third ground, Patent Owner argues that “Eder does not disclose selecting sub-frames representing portions of the input images, where the input images include fields of view captured through a lens of the camera.” Id. at 21. Even if we were to determine that Petitioner has demonstrated a reasonable likelihood of prevailing, the arguments presented 5 Sokeila is relied upon as a secondary reference to challenge claim 12 of U.S. Patent No. 10,958,840 B2 in IPR2024-01164 and IPR2024-01165. if trial were to be instituted. Accordingly, at this stage of the proceeding, based on the arguments and evidence set forth, we disagree that the merits of the Petition are compelling or particularly strong.” slip op. at 15
§ 103 obviousnessDiscretionary denialPatents in suitUS 10,529,052 - PTAB · Jun 5, 2024 · IPR2024-00136 · APJ Russell E Cass · IPR · Institution
The Board denied institution of IPR on challenged claim 1 under § 314(a), finding the Fintiv factors favored denial and the petition did not present compelling merits.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“Thus, in circumstances where the Board determines that the other Fintiv factors 1–5 do not favor discretionary denial, the Board shall decline to discretionarily deny under Fintiv without reaching the compelling merits analysis. In circumstances where, however, the Board’s analysis of Fintiv factors 1–5 favors denial of institution, the Board shall then assess compelling merits. Id. at 4–5. In this case, Fintiv factors 1–5 favor denial. Specifically, weighing factors 1–5 in this case, we find that the approximately 8-month delay between the estimated trial date and the deadline for a final written decision in this IPR (factor 2), the progress of and investment made by the parties and the Court in the parallel district court case (factor 3), and the fact that Petitioner is also a party in the District Court Litigation (factor 5) outweigh Petitioner’s stipulation mitigating the concerns about overlap between the two proceedings (factor 4). Additionally, we find that factor 1 is neutral. Thus, we address whether the merits of Petitioner’s case are compelling.” slip op. at 19
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“An inter partes review may not be instituted unless it is determined that “the information presented in the petition filed under section 311 and any response filed under section 313 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 (2018); see also 37 C.F.R § 42.4(a) (2021) (“The Board institutes the trial on behalf of the Director.”). The reasonable likelihood standard is “a higher standard than mere notice pleading,” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). For the reasons provided below and based on the record before us, we determine that it is appropriate for us to exercise our discretion under 35 U.S.C. § 314(a) to deny institution in this proceeding. Accordingly, we do not institute an inter partes review based on the Petition.” slip op. at 2
- BurdenNot shown unpatentable
“Based on the present record, Petitioner has not presented a compelling, meritorious case that the challenged claims are unpatentable. Petitioner bases its case upon a claim construction that it ascribes to Patent Owner, and then expressly criticizes as being inconsistent with the plain and ordinary meaning of the claim language and the ’347 patent Specification. Pet. 14–15. Additionally, Petitioner does not provide reasoning or evidence showing why the applied construction is correct, and Patent Owner does not agree with the construction in the Preliminary Response. Id. Under these facts, Petitioner has failed to set forth a sufficient basis for us to find a compelling case of unpatentability. Our conclusion in this regard is consistent with the Board’s prior decisions in Hologic, Orthopediatrics, and Samsung, upon which Patent Owner relies. See Prelim. Resp. 10–14. Moreover, we find that the contrary cases upon which Petitioner relies are inapposite here because they involved alternative constructions advanced by the petitioner. For example, in 10X Genomics, the Board explained that: [E]ven if our rules and guidance were correctly interpreted as prohibiting a petitioner from relying solely on a claim construction it believes is incorrect, that is not what Petitioner has done here. Petitioner proposes alternative claim constructions and presents at least one ground of unpatentability for each construction. 10X Genomics, Paper 8 at 22 (emphasis added). Similarly, in Donnelly, also cited by Petitioner, the petition offered alternative constructions—the construction proposed by the patent owner in district court and the “proper construction” that the petitioner believed was the correct one. Donnelly, Paper 2 (Petition) at 29–33 (identifying alternative constructions of “grip portion”). For the foregoing reasons, we determine that Petitioner has not made a compelling, meritorious showing that “path parameter information,” as required by the challenged claims, is disclosed by or would have been obvious over Sesia. As a result, factor 6 does not weigh in favor of institution.” slip op. at 23
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other
“Based on the present record, Petitioner has not presented a compelling, meritorious case that the challenged claims are unpatentable. Petitioner bases its case upon a claim construction that it ascribes to Patent Owner, and then expressly criticizes as being inconsistent with the plain and ordinary meaning of the claim language and the ’347 patent Specification. Pet. 14–15. Additionally, Petitioner does not provide reasoning or evidence showing why the applied construction is correct, and Patent Owner does not agree with the construction in the Preliminary Response. Id. Under these facts, Petitioner has failed to set forth a sufficient basis for us to find a compelling case of unpatentability. Our conclusion in this regard is consistent with the Board’s prior decisions in Hologic, Orthopediatrics, and Samsung, upon which Patent Owner relies. See Prelim. Resp. 10–14. Moreover, we find that the contrary cases upon which Petitioner relies are inapposite here because they involved alternative constructions advanced by the petitioner. For example, in 10X Genomics, the Board explained that: [E]ven if our rules and guidance were correctly interpreted as prohibiting a petitioner from relying solely on a claim construction it believes is incorrect, that is not what Petitioner has done here. Petitioner proposes alternative claim constructions and presents at least one ground of unpatentability for each construction. 10X Genomics, Paper 8 at 22 (emphasis added). Similarly, in Donnelly, also cited by Petitioner, the petition offered alternative constructions—the construction proposed by the patent owner in district court and the “proper construction” that the petitioner believed was the correct one. Donnelly, Paper 2 (Petition) at 29–33 (identifying alternative constructions of “grip portion”). For the foregoing reasons, we determine that Petitioner has not made a compelling, meritorious showing that “path parameter information,” as required by the challenged claims, is disclosed by or would have been obvious over Sesia. As a result, factor 6 does not weigh in favor of institution.” slip op. at 23
Claim constructionDiscretionary denialPatents in suitUS 8,891,347 - Hewlett Packard Enterprise Company / Aruba Networks, LLC et al. v. Q3 Networking LLCInstitution deniedPTAB · Oct 8, 2021 · IPR2021-00754 · APJ Barbara A Parvis · IPR · Institution
The Board denied institution of inter partes review of claims 1–10, 12, and 13 under § 314(a), finding the Fintiv factors favored denial because the ITC proceeding was advanced and substantially overlapped.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“The Board’s precedential decision in Fintiv sets forth the following factors the Board balances when determining whether to exercise its discretion to deny institution: 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. Fintiv, Paper 11 at 5–6. “[I]n evaluating the factors, the Board takes 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 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied fintivInstitution denied
“We determine that the merits of the Petition are not so strong as to outweigh the other Fintiv factors we consider here. Under these circumstances, we view this factor as neutral. C. Conclusion Based on the particular circumstances of this case, we determine that instituting an inter partes review is not appropriate under the standard set forth in Fintiv. As discussed above, the Final Determination in the parallel ITC proceeding is due six months before a final written decision would be due if we did institute an inter partes review, and the issues presented in this proceeding substantially overlap those issues in the parallel ITC proceeding. On balance, after a holistic consideration of the relevant facts and the particular circumstances of this case, we conclude that efficiency and integrity of the system are best served by denying institution. Thus, we exercise our discretion under § 314(a) to deny institution. IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that the Petition is denied, and no trial is instituted.” slip op. at 12
Discretionary denialPatents in suitUS 8,797,853 - Snap Inc. v. Blackberry LimitedInstitution deniedPTAB · Jul 13, 2020 · IPR2020-00392 · APJ Robert L Kinder · IPR · Institution
The Board denied institution on § 314(a) discretionary grounds and denied joinder, citing the concluded district court case, prior petition, and delay in filing.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“To institute an inter partes review, we must determine that the information presented in the Petition shows “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). Having considered both the Petition and the Preliminary Response, we exercise our delegated discretion, under 35 U.S.C. § 314, to deny the Petition in this proceeding. Accordingly, we do not institute an inter partes review. Because we deny institution of the Petition, we also deny Petitioner’s Motion for Joinder.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“The precedential Fintiv Order identifies several factors to be considered in analyzing § 314(a) issues, with the goal of balancing efficiency, fairness, and patent quality. See Fintiv Order, Paper 11 at 5–6. These factors include: 1) whether a stay exists or is likely to be granted if a proceeding is instituted; 2) proximity of the court’s trial date to the Board’s projected statutory deadline; 3) investment in the parallel proceeding by the court and 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 and considerations that impact the Board’s exercise of discretion, including the merits. Id.” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDenied
“As noted above, Petitioner filed IPR2019-00829 on March 25, 2019, which was already near the end of Petitioner’s statutory period. We denied institution on the merits on October 1, 2019. The Challenged Claims were part of this prior petition. Petitioner’s second petition, the current Petition, was filed on January 3, 2020. At that time, Petitioner had already received the Patent Owner’s Preliminary Response in IPR2019-00829 as well as our decision denying institution. Petitioner knew of the prior art asserted in the current Petition at least as of April 6, 2019 – the date Facebook filed its petition in IPR2019-00940. Prelim. Resp. 3; Ex. 2001. Thus, Petitioner waited at least nine months after learning of the asserted prior art to bring the second petition. These factors favor exercising our discretion to deny institution. General Plastic Factors 5–7 Petitioner’s explanation for the time elapsed between the filings of multiple petitions directed to nearly the same claims of the same patent consists of the following: Petitioner is also unaware of any basis under § 314(a) for the Board to decline to consider this Petition. As discussed in section I.B., Facebook previously filed an IPR petition challenging the ’929 patent on April 6, 2019. (Ex. 1022). Snap obtained Facebook’s petition, after it was filed and publicly available, from the Patent Office. Snap’s petition is a substantively identical copy of Facebook’s ’929 petition. (See Ex. 1022). Pet. 3. Petitioner does not address why we should institute a petition challenging claims that have already been disclaimed or found unpatentable by a district court. Petitioner also does not address the delay in bringing the current Petition even though Petitioner was aware of the prior art for at least nine months. The facts of this proceeding are unique, and Petitioner has not explained adequately why we should not exercise our discretion to deny this Petition.” slip op. at 13
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“not obligate us to institute in this proceeding without first considering whether to exercise discretion. The statutory provision governing joinder in inter partes review proceedings is 35 U.S.C. § 315(c), which reads: If the Director institutes an inter partes review, the Director, in his or her discretion, may join as a party to that inter partes review any person who properly files a petition under section 311 that the Director, after receiving a preliminary response under section 313 or the expiration of the time for filing such a response, determines warrants the institution of an inter partes review under section 314. Two clauses within 35 U.S.C. § 315(c) are the source of discretion to deny joinder. The first states “the Director, in his or her discretion, may join as a party.” Thus, joinder is not required, but remains discretionary. Second, the statute requires an additional step. Acting under delegated authority from the Director, we first determine whether the petition warrants the institution of an inter partes review under § 314. Id. (“the Director, after receiving a preliminary response under section 313 . . . determines warrants the institution of an inter partes review under section 314”). The statute allows for a patent owner preliminary response, and we read 35 U.S.C. § 315(c) as requiring us to consider all of patent owner’s arguments, including those related to discretionary denial under section 314(a).” slip op. at 11
Discretionary denialPatents in suitUS 8,676,929 - Snap Inc. v. Blackberry LimitedInstitution deniedPTAB · Jul 13, 2020 · IPR2020-00391 · APJ Robert L Kinder · IPR · Institution
The Board denied institution of IPR on claims 1, 2, 9, 14, 15, and 21 under § 314(a), and denied Snap’s motion for joinder.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied
“Weighing the totality of the record before us, we determine that exercising our discretion, under 35 U.S.C. § 314, to deny the Petition in this proceeding is the proper outcome. As noted above, several factors weigh in favor of institution. We are most persuaded, however, by all the factors favoring exercising our discretion, including the advanced phase of the litigation. Despite knowing of the prior art for some time, Petitioner delayed filing the Petition until after all of the Challenged Claims had either been disclaimed or found to be unpatentable subject matter in a final district court decision.” slip op. at 16
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“The Fintiv factors provide support for exercising discretion not to institute this Petition. See Fintiv Order, Paper 11 at 5–6. The district court case cannot be stayed because it has concluded. We would endeavor to meet our statutory deadline in December 2020, one year after the district court issued final judgment. The parties’ and district court’s investment in the district court case was sufficient to already reach a final adjudication. Now, the parties are involved in a Federal Circuit appeal that may or may not affirm the district court’s determinations. Petitioner and the defendant in the district court case are also the same party. These factors favor exercising discretion. The issues do not necessarily overlap between the petition and the parallel proceeding because the district court reached final judgment based on 35 U.S.C. § 101, which is not before us. We also weigh the potential burdens, and joining Patent Owner to an already existing proceeding would not increase the burden for Patent Owner or for the Board. These factors favor not exercising discretion and instituting review.” slip op. at 13
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDenied
“Patent Owner has shown that Petitioner knew of at least the Noble, Hassett, and Johnson prior art references as of October 29, 2018. Prelim. Resp. 3; Ex. 2001. As shown above, Noble serves as the primary reference in each of Petitioner’s four grounds, while Hassett and Johnson are in two grounds each. Pet. 2–3. Thus, Petitioner waited at least fourteen months after learning of the asserted prior art to bring the second petition. These factors favor exercising our discretion to deny institution. General Plastic Factors 5–7” slip op. at 15
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“If the Director institutes an inter partes review, the Director, in his or her discretion, may join as a party to that inter partes review any person who properly files a petition under section 311 that the Director, after receiving a preliminary response under section 313 or the expiration of the time for filing such a response, determines warrants the institution of an inter partes review under section 314. Two clauses within 35 U.S.C. § 315(c) are the source of discretion to deny joinder. The first states “the Director, in his or her discretion, may join as a party.” Thus, joinder is not required, but remains discretionary. Second, the statute requires an additional step. Acting under delegated authority from the Director, we first determine whether the petition warrants the institution of an inter partes review under § 314. Id. (“the Director, after receiving a preliminary response under section 313 . . . determines warrants the institution of an inter partes review under section 314”). The statute allows for a patent owner preliminary response, and we read 35 U.S.C. § 315(c) as requiring us to consider all of patent owner’s arguments, including those related to discretionary denial under section 314(a).” slip op. at 12
Discretionary denialPatents in suitUS 8,296,351
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.