• Phison Electronics Corporation v. Vervain, LLCInstitution denied
  PTAB · May 28, 2025 · IPR2025-00212 · APJ Jon M Jurgovan · IPR · Institution

  Institution of inter partes review of claims 1–11 was denied under § 314(a) because the Fintiv factors, viewed holistically, favored discretionary denial.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied

    “7. Weighing the Fintiv Factors We take “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review” when evaluating the Fintiv factors. Fintiv at 6. The trial date (December 2025) for the parallel proceeding is considerably earlier than the projected statutory deadline (June 2026) for issuing a final written decision in this proceeding. Accordingly, Fintiv factor 2 weighs for discretionary denial. Under Fintiv factor 4, there is significant overlap between the invalidity challenges asserted in the two proceedings. Petitioner has proffered no stipulation to ameliorate concerns of duplicative efforts and conflicting decisions. Accordingly, this factor weighs for discretionary denial. Petitioner and the defendant in the parallel proceeding are the same, so Fintiv factor 5 weighs for discretionary denial.” slip op. at 15

  Discretionary denial
  Patents in suitUS 8,891,298
• Next Caller Inc. v. Trustid, Inc.Institution denied
  PTAB · Oct 16, 2019 · IPR2019-00961 · APJ Jean R Homere · IPR · Institution

  The Board denied institution in IPR2019-00961 and IPR2019-00962 because substantially overlapping district court litigation was advanced and scheduled to conclude before a Board decision.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied

    “discretion under § 314(a) to deny a petition upon determining that institution would be an inefficient use of Board resources. NHK Spring, IPR2018- 00752, Paper 8 at 19–20. In particular, the Board determined that it was proper to exercise discretion to deny institution in a case having a parallel district court proceeding involving (i) the same patent/parties, (ii) the same claim construction standard, (iii) the same prior art references, and (iv) the same arguments as in the district court proceeding, which was scheduled to be completed before a final decision would have been due in the Board proceeding.7 See id. The Board determined that these circumstances supported denial of the petition under § 314(a), considering the AIA’s objective “to provide an effective and efficient alternative to district court litigation.” Id. at 20 (quoting Gen. Plastic8). We agree with TRUSTID that the case before us presents circumstances that support denial of institution under § 314(a). Prelim. Resp. 15–19.” slip op. at 10

  • Other 314aInstitution denied discretionary otherInstitution denied

    “e. Additional Factor: Next Caller’s Delay Next Caller’s delay in filing the Petition weighs in favor of the Board exercising discretion to deny institution under § 314. As depicted in table 4 below, at the time of the ’039 Petition, Next Caller was aware or could have reasonably been aware of the prior art asserted in the challenges set forth in the instant proceeding.” slip op. at 15

  Discretionary denialcites Phillips
  Patents in suitUS 8,238,532

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.