- 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 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Truesight Communications LLCInstitution deniedPTAB · Apr 21, 2025 · IPR2024-01477 · APJ Bach V Hoang · IPR · Institution
The Board denied institution of IPR on claims 1–14 under § 314(a), finding that the Fintiv factors favoring denial outweighed the stipulation against denial.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“Statutory Deadline We weigh this factor as favoring the exercise of discretionary denial. The parties agree that the projected statutory deadline for issuing our Final Written Decision (April 23, 2026) is a little more than six months after trial is currently scheduled in the District Court litigation (October 6, 2025). Supp. Br. 4; Prelim. Resp. 19–20. Because the currently scheduled District Court trial is set to begin six months before our deadline to reach a final decision, this factor favors discretionary denial in this case. See Fintiv, Paper 11 at 9. C. Factor 3 – Investment in the Parallel Proceeding We weigh this factor as favoring the exercise of discretionary denial. Showing substantial investment in the District Court litigation, document production is substantially complete and fact discovery will be completed within two weeks of this Decision on Institution. Ex. 2001, 4–5 (Second Amended Docket Control Order). Further, a hearing on claim construction and associated briefing is complete. Id. And, the deadline to serve Institution. Id. at 4. These actions show that there has been notable investment by the parties in the District Court litigation. Furthermore, we must consider this parallel work in relation to the October 6, 2025 District Court litigation trial date, which is six months before the projected statutory deadline of our Final Written Decision. See Fintiv, Paper 11 at 10. As work in the District Court litigation has moved beyond preliminary stages into more advanced stages, instituting at this time implicates at least some duplicative costs. See id. On the matter of petition timing, it is often reasonable for a petitioner to wait to file its petition until it learns which claims are being asserted against it in the parallel proceeding. Fintiv, Paper 11 at 11. Here, Petitioner filed its petition on September 27, 2024, which is four months after receiving Patent Owner’s May 29, 2024 disclosure of asserted claims and infringement contentions and nine months after it was served Patent Owner’s December 29, 2023 infringement complaint. Ex. 1017; Ex. 1018, 1. Further, Petitioner served its amended invalidity contentions in the District Court litigation on December 17, 2024, i.e., after it filed its Petition.5 We do not find the timing of the Petition in this case to outweigh the significant investment in the District Court litigation. Considering the substantial investment in the District Court litigation and the rapidly advancing District Court litigation trial date balanced against the timing of the Petition, we determine this factor weighs in favor of discretionary denial.” slip op. at 11
Discretionary denialPatents in suitUS 8,898,803 - NXP USA, Inc. v. Impinj, Inc.Rehearing deniedPTAB · Aug 25, 2022 · PGR2022-00005 · APJ Ken B Barrett · PGR · Rehearing
The Board denied NXP’s rehearing request, leaving in place the denial of PGR institution on claims 1–20 based on its holistic Fintiv analysis.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision should be modified. 37 C.F.R. § 42.71(d). “The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id. When rehearing a decision on a petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). “An abuse of discretion may be indicated if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors.” Huawei Device Co., Ltd., v. Optis Cellular Tech., LLC, IPR2018-00816, Paper 19, 3 (PTAB Jan. 8, 2019) (precedential) (citations omitted). Further, “[a]bsent a showing of ‘good cause’ . . . , new evidence will not be admitted” in connection with a request for rehearing. Patent Trial and Appeal Board Consolidated Trial Practice Guide 90 (Nov. 2019), https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf (citing Huawei Device Co., IPR2018-00816, Paper 19 at 4). Thus, a request for rehearing is not generally an opportunity to present new arguments or evidence.” slip op. at 3
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Denied
“with the Request. “Ideally, a party seeking to admit new evidence with a rehearing request would request a conference call with the Board prior to filing such a request so that it could argue ‘good cause’ exists for admitting the new evidence. Alternatively, a party may argue ‘good cause’ exists in the rehearing request itself.” Huawei Device Co., IPR2018-00816, Paper 19 at 4; see also Consolidated Trial Practice Guide at 90 (quoting the same). Petitioner did not request a conference call prior to filing the Request to argue that good cause exists and does not present arguments in the Request regarding good cause. Accordingly, we find that Petitioner has not met its burden of showing that good cause exists to justify consideration of those exhibits to evaluate whether we erred by overlooking or misapprehending anything in the Decision. B. We Did Not Misapprehend the Significance of the Facts Pertaining to” slip op. at 4
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for patent owner
“argument, we stated that, “[b]ecause the currently scheduled trial in the parallel proceeding is scheduled to begin over two months before our deadline to reach a final decision, this factor weighs somewhat in favor of discretionary denial.” Dec. 9. After discussing all of the Fintiv factors and after “consider[ing] ‘a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review,’” we exercised discretion to deny institution of a post-grant review. Id. at 12–13 (quoting Fintiv, Paper 11 at 6).” slip op. at 6
Discretionary denialPatents in suitUS 10,929,734 - PTAB · May 19, 2022 · IPR2022-00239 · APJ John A Hudalla · IPR · Institution
The Board denied institution for claims 1–20 under § 314(a), finding the advanced parallel litigation posture favored discretionary denial under Fintiv.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“acted upon Patent Owner’s request to modify the schedule. As such, we consider this factor with the trial being set for November 7, 2022. See Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 15 at 13 (May 13, 2020) (informative) (“We generally take courts’ trial schedules at face value absent some strong evidence to the contrary.”). This is over six months before the expected date of our final written decision. Thus, we find that the second Fintiv factor favors exercising authority to deny institution.” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“demonstrating that the challenged claims are invalid.” Pet. 79; see also Pet. Reply 3 (similar argument). Patent Owner argues that the Petition is deficient based on its arguments against the merits of the Petition. Prelim. Resp. 10. Based on the preliminary record, the merits of Petitioner’s asserted grounds seem to meet the “reasonable likelihood” standard for institution. Thus, we determine that the sixth Fintiv factor is neutral.” slip op. at 13
Discretionary denialPatents in suitUS 8,248,940 - PTAB · May 19, 2022 · IPR2022-00238 · APJ John A Hudalla · IPR · Institution
The Board denied institution for claims 1–17 under § 314(a), finding the advanced posture of the parallel litigation outweighed countervailing factors under Fintiv.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied fintivInstitution denied
“review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information 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.” For the reasons that follow, we exercise our discretion to deny institution of an inter partes review under 35 U.S.C. § 314(a).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“advanced . . . and instituting would lead to duplicative costs” with respect to invalidity/unpatentability. Fintiv, Paper 11 at 10. Accordingly, we find that the advanced state of expert discovery regarding invalidity favors exercising discretion to deny institution.” slip op. at 10
Discretionary denialPatents in suitUS 7,548,945 - NXP USA, Inc. v. Impinj, Inc.Institution deniedPTAB · May 2, 2022 · PGR2022-00005 · APJ Ken B Barrett · PGR · Institution
The Board denied institution under Fintiv because the parallel district court case was advanced, scheduled for trial earlier, and substantially overlapped with the petition.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“decision in this proceeding, if institution were granted, would be May 2023, over two months after the currently scheduled trial date. “We generally take courts’ trial schedules at face value absent some strong evidence to the contrary.” Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 15, 13 (PTAB May 13, 2020) (informative) (“Fintiv II”). “If the court’s trial date is earlier than the projected statutory deadline, the Board generally has weighed this fact in favor of exercising authority to deny institution.” Fintiv, Paper 11 at 9. Because the currently scheduled trial in the parallel proceeding is scheduled to begin over two months before our deadline to reach a final decision, this factor weighs somewhat in favor of discretionary denial. See Fintiv II, Paper 15 at 13.” slip op. at 9
Discretionary denialPatents in suitUS 10,929,734 - NXP USA, Inc. v. Impinj, Inc.Institution deniedPTAB · Apr 21, 2022 · IPR2021-01556 · APJ Kevin C Trock · IPR · Institution
The Board denied institution under § 314(a), finding the Fintiv factors favoring denial collectively outweighed those against it.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“strong evidence to the contrary.” Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 15, 13 (PTAB May 13, 2020) (informative) (“Fintiv II”). “If the court’s trial date is earlier than the projected statutory deadline, the Board generally has weighed this fact in favor of exercising authority to deny institution.” Fintiv, Paper 11 at 9. Because the currently scheduled trial in the parallel proceeding is scheduled to begin two months before our deadline to reach a final decision, this factor weighs somewhat in favor of discretionary denial. See Fintiv II, Paper 15 at 13.” slip op. at 8
Discretionary denialPatents in suitUS 10,776,198 - Cisco Systems, Inc. v. Monarch Networking Solutions LLCInstitution deniedPTAB · Mar 31, 2021 · IPR2020-01678 · APJ Robert J Weinschenk · IPR · Institution
The Board denied institution of IPR for claims 1–10 under § 314(a), finding that the Fintiv factors favored denial because the district court trial was near and the litigation was substantially advanced.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied fintivInstitution denied
“Section 314(a) states that [t]he Director may not authorize an inter partes review to be instituted unless the Director determines 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. Under § 314(a), we have discretion to deny institution of an inter partes review. Cuozzo, 136 S. Ct. at 2140. We consider several factors when determining whether to deny institution under § 314(a) based on a parallel district court proceeding, specifically 1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits.” slip op. at 5
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“The current trial date in the District Court Litigation is June 7, 2021, which is approximately ten months before the projected statutory deadline for a final written decision in this case. Reply 2; Sur-reply 3; Ex. 2012, 1. Although there is some uncertainty regarding the trial date in the District Court Litigation, it does not outweigh the substantial gap between the trial date and the final written decision deadline.” slip op. at 7
Discretionary denialPatents in suitUS 8,451,844 - 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.