- Formycon AG v. Regeneron Pharmaceuticals, Inc.Institution deniedPTAB · Jun 2, 2025 · IPR2025-00233 · APJ Michael A Valek · IPR · Institution
The Board denied institution under § 314(a) based on the Fintiv factors and denied joinder; it did not reach the merits of the asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“B. The Fintiv Factors and Related Guidance The Board’s precedential decision in Fintiv outlines factors that balance considerations of system efficiency, fairness, and patent quality when a patent owner raises an argument for discretionary denial due to the advanced state of a parallel proceeding, such as the MDL proceeding here. Fintiv 5–6. These factors are: 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. Id. “[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 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“III. DISCRETION UNDER 35 U.S.C. § 314(A) We begin by addressing Patent Owner’s arguments for discretionary denial. As explained below, we find those arguments persuasive. Thus, we exercise discretion to deny institution of the Petition under 35 U.S.C. § 314(a) without reaching the merits of Petitioner’s asserted grounds of unpatentability.” slip op. at 8
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“35 U.S.C. § 314(a) to deny institution of the Petition and deny the Joinder Motion.” slip op. at 2
Discretionary denialPatents in suitUS 11,084,865 - Samsung Bioepis Co., Ltd. v. Regeneron Pharmaceuticals, Inc.Institution deniedPTAB · Jun 2, 2025 · IPR2025-00176 · APJ Michael A Valek · IPR · Institution
The Board denied institution of IPR on all challenged claims under § 314(a), finding the Fintiv factors—particularly investment, overlap, and merits—weighed against review.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“raised by this overlap, but given the circumstances, it does not effectively mitigate them. First, the disputed issues for Petitioner’s ODP defense are the same or substantially similar to those for the obviousness grounds in the Petition, but the Sotera stipulation does not prevent Petitioner from litigating those issues before both the district court (as part of its ODP defense) and here in the event an IPR is instituted.19 Second, the MDL proceeding 19 ODP or nonstatutory double patenting is, as the name implies, not premised on any statute. See, e.g., Ostuka Pharm. Co., Ltd. v. Sandoz, Inc., 678 F.3d 1280, 1297 (Fed. Cir. 2012) (“Nonstatutory double patenting is a judicially created doctrine grounded in public policy.”). Accordingly, it is not a ground Petitioner reasonably could have raised in this IPR. See 35 U.S.C. § 311(b) (inter partes review may be requested “only on a ground that could be raised under section 102 or 103”). includes other biosimilar applicant defendants who are similarly motivated to try to invalidate the ’865 patent claims, but who are not subject to any Sotera stipulation. Even if we institute review on Petitioner’s grounds here, those other defendants remain free to litigate the same grounds in the consolidated MDL proceeding. For these reasons and given the particular circumstances of this case, Petitioner’s Sotera stipulation does not sufficiently mitigate the risks of duplicated efforts or inconsistent decisions by making this IPR a “true alternative” to resolution of these issues by the district court. See Motorola Solutions, Inc. v. Stellar, LLC, IPR2024-01205, Paper 19, 3–4 (PTAB Mar. 28, 2005) (determining on Director Review that a Sotera stipulation did not ensure IPR would be a “true alternative” because Petitioner’s invalidity arguments “include combinations of the prior art asserted in these proceedings with unpublished system prior art, which Petitioner’s stipulation is not likely to moot” and thus the same or similar issues would remain in the parallel proceeding); SAP America, Inc. v. Cyandia, Inc., IPR2024-01496, Paper 13, 8–9 (PTAB Apr. 7, 2025) (similar).” slip op. at 19
Discretionary denialPatents in suitUS 11,084,865 - Innolux Corporation v. Phenix Longhorn LLCInstitution deniedPTAB · May 15, 2025 · IPR2025-00043 · APJ Kevin F Turner · IPR · Institution
The Board denied institution of IPR challenging claims 1–5 and 8–14, exercising § 314(a) discretion under Fintiv based on the Texas litigation.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“We agree with Patent Owner that its asserted trial date of February 17, 2026, would likely occur approximately 4 months before the latest date on which a final decision can be issued in this proceeding (June 12, 2026), and that is the metric we should use to determine the proximity of trial date to the projected statutory deadline. Accordingly, the facts underlying this factor weigh in favor of denial.” slip op. at 9
Discretionary denialPatents in suitUS 7,233,305 - Cipla Limited v. Gilead Sciences, Inc.Institution deniedPTAB · May 15, 2025 · IPR2025-00033 · APJ Susan L C Mitchell · IPR · Institution
The Board denied institution of IPR on claims 1–13 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 fintivDenied
“We determine that this factor weighs heavily in favor of exercising discretion to deny the Petition. The trial date in the district court litigation is scheduled for October 6, 2025. See Prelim. Resp. 16 (citing Ex. 2010). This date is at least six months before our projected statutory deadline should we go forward in this case. Patent Owner points out that this trial date is nine months later than the median time to trial in the District of Delaware, and in Patent Owner’s view, the parties are on track to satisfy the current schedule. Id. at 16–17 (citing Ex. 2011).” slip op. at 9
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached
“1 Patent Owner also asserts that the Petition should be denied under 35 U.S.C. § 325(d), but we need not reach this issue because we are exercising discretion under Section 314(a) to deny the Petition. See Prelim. Resp. 2–3.” slip op. at 2
Discretionary denialPatents in suitUS 11,744,802 - Nokia Of America Corporation / Ericsson Inc. v. Godo Kaisha IP Bridge 1Institution deniedPTAB · Nov 2, 2022 · IPR2022-00755 · APJ John D Hamann · IPR · Institution
The Board denied institution under § 314(a), finding the Fintiv factors favored denial and that the challenges to claims 14–19 were not compelling.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“Accordingly, this factor weighs heavily in favor of exercising our discretion to deny the Petition.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In sum, we find that Petitioner’s arguments, and Dr. Fuja’s cited testimony, are not compelling. Accordingly, Petitioner’s showing as to independent claim 14 is less than a “compelling, meritorious challenge[].” In addition, claims 15–19 depend from claim 14, and Petitioner’s arguments for these dependent claims do not cure the above deficiencies for independent claim 14. Pet. 26– 31. Likewise, Petitioner’s arguments for dependent claims 15 and 18 for the remaining ground (Kotecha combined with R1-081126) do not cure the above deficiencies for independent claim 14. Pet. 31–34. Thus, Petitioner’s showing of unpatentability is not compelling for any of the challenged claims for any of the asserted grounds. VII. CONCLUSION For the foregoing reasons, we exercise our discretion to deny the Petition. VIII. ORDER In consideration of the foregoing, it is hereby: ORDERED that the Petition is denied and no trial is instituted.” slip op. at 25
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot reached
“We find that Petitioner’s arguments are not compelling. First, we have doubts as to whether Kotecha (i) teaches a scheme “which utilizes a CQI trigger, a particular MCS value, and other fields present in the uplink grant” or (ii) “encourages [one of ordinary skill in the art] to use fields in addition to the MCS field.” Pet. 23–24. Rather, it appears that Kotecha teaches in its discussion regarding using a CQI trigger and a particular MCS value that “different fields, other than the MCS field, may be reused according to [Kotecha’s] disclosure to clearly signal whether an uplink grant is for only CQI or CQI and data.” See Ex. 1004, 4:23–43 (emphasis added). Hence, Kotecha teaches using other fields in lieu of—not in addition to—the MCS field. Id. Moreover, Kotecha’s teachings regarding using “one or more fields” to indicate only CQI or CQI and data identify the CQI request and MCS fields, as examples, without identifying additional fields, nor requiring the use of these fields. See id. at 7:19–22, 8:15–20, Fig. 6. Thus, these teachings also do not provide compelling support for Petitioner’s arguments that Kotecha encourages adding a third field to the CQI request and MCS fields combination. Id. Second, we find uncompelling Petitioner’s argument that one of ordinary skill in the art “would have been motivated to try using the . . . (RB) assignment field as a further indication of whether to multiplex CQI with data,” which “is one of only seven other possible fields for [one of ordinary skill in the art] to consider.” Pet. 25. This argument is premised on Kotecha encouraging using a third field—and only a third field—in addition to the CQI request and MCS fields, which, as we discuss above, Kotecha does not. Rather, choosing any three, for example, of the nine fields in the uplink grant would yield 84 possible combinations. See Ex. 1004, 1:25–34 (listing nine fields); Ex. 1003 ¶ 78 (testifying that “Kotecha identifies nine fields in the uplink grant”). Yet more combinations are possible if combinations having other numbers of fields are employed. “[T]he breadth of these choices and the numerous combinations indicate that these disclosures would not have rendered the claimed invention obvious to try.” Leo Pharm. Prod., Ltd. v. Rea, 726 F.3d 1346, 1356 (Fed. Cir. 2013) (citing Rolls–Royce PLC v. United Techs. Corp., 603 F.3d 1325, 1339 (Fed. Cir. 2010)). Nor does Petitioner cite to any guidance provided in Kotecha about which combinations of fields would likely be successful in arguing that the claimed three field combination would have been obvious to try. See In re Kubin, 561 F.3d 1351, 1359 (Fed. Cir. 2009) (“[W]here a defendant merely throws metaphorical darts at a board filled with combinatorial prior art possibilities, courts should not succumb to hindsight claims of obviousness.”).” slip op. at 22
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Third, we do not find compelling Dr. Fuja’s cited testimony, which in our view, and taken as a whole, risks using impermissible hindsight to reconstruct the invention of claim 14. See Metalcraft of Mayville, Inc. v. The Toro Co., 848 F.3d 1358, 1367 (Fed. Cir. 2017) (“[W]e cannot allow hindsight bias to be the thread that stitches together prior art patches into something that is the claimed invention.”); In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (“It is impermissible to use the claimed invention as an instruction manual or ‘template’ to piece together the teachings of the prior art so that the claimed invention is rendered obvious.” (citation omitted)). For example, the testimony appears to be predicated incorrectly on Kotecha teaching using a third field (i.e., the resource assignment field) in addition to the CQI request and MCS fields, and the testimony instead tracks the claimed three field combination of claim 14. Ex. 1003 ¶¶ 77–79. Moreover, Dr. Fuja opines that “it would have been obvious for [one of ordinary skill in the art] to use the resource assignment field in the uplink grant in addition to the CQI request bit and the MCS field because doing so provides additional flexibility and greater efficiency at no additional cost.” Ex. 1003 ¶ 79. We find this testimony to be conclusory as there is no factual support underlying Dr. Fuja’s opinion that one of ordinary skill in the art would have found such to be obvious. Id. ¶¶ 77–83. Also, claim 14 recites more than just reusing the resource assignment field to indicate whether data should be multiplexed with the CQI report. Ex. 1001, 24:7–14. Rather, claim 14 also recites evaluating whether the indicated number of resource blocks “is smaller than or equal to a determined number of resource blocks.” Id. Kotecha does not teach this, nor does Dr. Fuja address it in a compelling way. See Ex. 1003 ¶¶ 77–83.” slip op. at 23
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 8,385,239 - Ericsson Inc. / Nokia Of America Corporation v. Godo Kaisha IP Bridge 1Institution deniedPTAB · Nov 2, 2022 · IPR2022-00725 · APJ David C Mckone · IPR · Institution
The Board denied institution for claims 1–6 and 11–16 under § 314(a), finding the Fintiv factors favored denial and the challenges were not compelling.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.”); 35 U.S.C. § 314(a). The Board has held that the advanced state of a parallel district court action is a factor that may weigh in favor of denying a petition under § 314(a). See NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 at 20 (PTAB Sept. 12, 2018) (precedential); Patent Trial and Appeal Board, Consolidated Trial Practice Guide, 58 & n.2 (Nov. 2019) (“Trial Practice Guide”)2. We consider the following factors to assess “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”: 1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284, 287–88 (2011), amended 35 U.S.C. § 103. Because the ’000 patent claims a filing date before March 16, 2013, the effective date of the relevant amendment, the pre-AIA version of § 103 applies. 2 Available at https://www.uspto.gov/sites/default/files/documents/ tpgnov.pdf. 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”). 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.” slip op. at 5
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied fintivInstitution denied
“implemented by a base station. As Petitioner points out, Classon describes a multicarrier communications system that includes a “base site” and “receiving platforms” (also referred to as “transmission targets”), which we find are a base station and mobile stations. Pet. 19–20 (citing Ex. 1005, code (57), ¶¶ 23, 27, 28, 31, Fig. 4). The parties dispute whether Classon (in light of the background knowledge of a skilled artisan or, in light of TR 25.858) teaches transmitting control information indicating whether a mobile station is to transmit one channel quality indicator (CQI) for each subcarrier block within a communication frequency band or one CQI for all subcarrier blocks within the communication frequency band instead of multiple CQIs for multiple subcarrier blocks within the communication frequency band, as recited in claim 1 (and similarly recited in claim 11). For the reasons given below, the case Petitioner advances is less than compelling.” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Patent Owner’s argument has merit. Paragraphs 37–40 of Classon describe the base station determining what mode to use for communication based on the information (including CQI information) sent by the mobile units. Paragraph 41 states that “such channel quality information will preferably already be available to the base site” but that, if it is not available, “the base site can transmit 73 a message to the relevant transmission target or targets and request a reply that includes the relevant channel quality information.” Also, paragraph 41 states that “[w]ays in which such information can be provided to the base site will be described below in more detail.” This appears to be a reference to Classon’s description of the mobile stations, not the base station, determining that they are of “type 1” or “type 2” and sending channel quality information to the base station based on that determination, after which the base station determines whether to use the first mode or second mode in communications. Ex. 1005 ¶¶ 45–51. Thus, rather than supporting Petitioner’s position, the context around paragraph 41 appears in friction with that position. Petitioner does not explain how the base station determines a transmission mode (and thus a requested amount of CQI information) without first having that information from the mobile stations. Instead, it is reasonable to read paragraph 41 as requesting of the mobile stations information that the mobile stations deem appropriate; in other words, that the mobile stations determine whether to send a CQI value for each subcarrier or information on average channel quality. Even if it is sufficient to go forward on a theory that Classon implicitly teaches the claimed control message, the evidence Petitioner advances for this position is not compelling.” slip op. at 23
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached
“III. DISCRETIONARY DENIAL UNDER 35 U.S.C. § 325(D) Petitioner argues that we should not deny the Petition under 35 U.S.C. § 325(d). Pet. 56. Patent Owner argues that we should. Prelim. Resp. 23– 28. Because we deny the Petition for other reasons, we do not reach whether we should exercise our discretion to deny the Petition under § 325(d).” slip op. at 29
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 9,137,000 - Ethicon, Inc. v. Board Of Regents, The University Of Texas SystemInstitution deniedPTAB · Jun 10, 2020 · IPR2019-00406 · APJ Avelyn M Ross · IPR · Institution
The Board denied institution of IPR on all challenged claims, exercising § 314(a) discretion because the parallel district court case was advanced, overlapping, and likely to conclude first.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“waive a jury demand, a trial “will happen sooner if it is scheduled as a bench trial than it will as a jury trial.” Id. at 14:20–24. According to the Court, the parties should expect trial to occur within a year. See id. at 17:21–23 (“What I’m telling you is that you will get reached in sooner than a year, in all likelihood.”). Both parties withdrew their request for a jury demand. See Ex. 3006. Were we to institute inter partes review, a final written decision in this proceeding would issue in June 2021—leaving a year before resolution of this proceeding. Given the Western District of Texas’ emphasis that the parallel litigation should proceed as if still set for June 22, 2020, and its expectation of holding a bench trial within a year, this factor weighs strongly in favor of discretionary denial in this case.” slip op. at 10
Discretionary denialPatents in suitUS 6,596,296 - Edwards Lifesciences Corp. / Edwards Lifesciences LLC v. Evalve, Inc.Institution deniedPTAB · Mar 19, 2020 · IPR2019-01546 · APJ Susan L C Mitchell · IPR · Institution
The Board denied institution on all challenged claims under § 314(a), citing the advanced district court litigation, substantial overlap, and the trial scheduled well before a final Board decision.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“First, trial is set to conclude well before a final decision would be due in this proceeding. Here, the district court has scheduled a five-day jury trial to begin on May 6, 2020. Ex. 3001, November 21, 2019, minute order. The Court’s comments in the docket reflect an intent to preserve this trial date. Id. at docket entry 333 (considering Patent Owner’s motion to amend the complaint to be withdrawn because it would require a substantial of extension of the trial date). Also, it appears from the district court’s docket that extensive pre-trial briefing by the parties, including motions to exclude or strike expert testimony, is well underway. See Ex. 3001, docket entries 352–359. The parties are also seeking partial summary judgment on various issues in view of the upcoming trial. Id. at docket entries 340–351. Accordingly, we expect that the jury trial in the district court proceeding would conclude more than ten months before a final decision would be due. See Prelim. Resp. 9; 35 U.S.C. § 316(a)(11); 37 C.F.R. § 42.100; NHK, IPR2018-00752, Paper 8, 19–20 (exercising discretion to deny institution where trial was set to occur six months before the Board’s expected final decision). Second, there is substantial overlap between the arguments raised in the district court litigation and those raised in the Petition. Petitioner relies predominantly on the same prior art – Kuehn, Tremulis, Roth, and Skelton – in both proceedings to challenge patentability and articulates substantially the same arguments as to why the combination of the teachings of these references renders obvious claims 1, 4, 6, 10, 11, 14, 16, 1720, 22, 33, and 34 of the ’388 patent. Compare Pet. 30–79 (argument with respect to Grounds 1 and 2), with Ex. 2063, 193–238 and Ex. 2013 (redline comparison of arguments from the Petition and arguments in the invalidity contentions filed in the district court litigation). In addition, the claim constructions requested in this proceeding overlap with those addressed in the district court proceeding and would be decided under the same claim construction standard.9 Pet. 22–28; Ex. 2061, 2–3, 11–13; Ex. 2062, 2. Third, both the parties and the district court have already directed substantial time and energy toward resolving the district court litigation. 9 The claim construction standard to be employed in an inter partes review recently changed from broadest reasonable interpretation to “the same claim construction standard used by Article III federal courts . . . which follow According to Patent Owner, as of the filing of its Preliminary Response, the parties had “produced over 2 million pages of documents and . . . taken around 50 depositions.” Prelim. Resp. 8. Similarly, as already discussed, the district court has been asked to decide a motion of a temporary restraining order (Ex. 3001, docket entry 63), a motion for a preliminary injunction (id. at docket entries 164, 165, and 166),10 and claim construction (id. at docket entry 297). The District Court held lengthy hearings regarding the preliminary injunction motion and claim construction that involve many of the issues presented here. Id. at docket entry 122 (minute order giving the parties 3 hours each to present arguments regarding the preliminary injunction motion); id.at docket entry 219 (minute order allocating 3 hours to be split between the parties for a Markman hearing). The district court has also been asked to rule on numerous discovery disputes. Id. at docket entries 26, 66, 74, 75, 184, 265, and 305, and at March 22, 2019 minute order. Given how far advanced the litigation is, the continued indication that trial will proceed as scheduled, and the substantial work involving many of the same issues presented here already accomplished by the district court and the parties, institution of an inter partes review here cannot be considered to be an efficient or effective alternative to the litigation.” slip op. at 10
Discretionary denialcites PhillipsPatents in suitUS 7,736,388
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.