- Phison Electronics Corporation v. Vervain, LLCInstitution deniedPTAB · 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 denialPatents in suitUS 8,891,298 - 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 - Google LLC v. Personalized Media Communications, LLCRehearing deniedPTAB · Nov 5, 2020 · IPR2020-00722 · APJ John F Horvath · IPR · Rehearing
The Board denied Google’s request for rehearing and left in place its denial of institution, finding no abuse of discretion in its Fintiv analysis.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Standard for Reconsideration When rehearing a decision on petition, the Board will review the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). “An abuse of discretion occurs if the decision: (1) is clearly unreasonable, arbitrary, or fanciful; (2) is based on an erroneous conclusion of law; (3) rests on clearly erroneous fact findings; or (4) involves a record that contains no evidence on which the Board could rationally base its decision.” Redline Detection, LLC v. Star Envirotech, Inc., 811 F.3d 435, 442 (Fed. Cir. 2015) (internal citations omitted). A request for rehearing “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.” 37 C.F.R. § 42.71(d). The burden of showing a decision should be modified on a request for rehearing lies with the party challenging the decision. Id.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDecided for patent owner
“Our Decision performed such an analysis, finding factor 3 favored denying institution because “the District Court and the parties have invested significant resources in the district court case on issues of claim construction and validity, including by completing expert discovery on July 8, 2020.” Dec. 8. The issuance of the 94-page claim construction order and the completion of expert discovery on validity, all done in preparation for a trial scheduled to commence less than two months after our Decision was due, is evidence that “the parallel proceeding is more advanced, a stay may be less likely, and instituting would lead to duplicative costs,” all of which are factors that “favor[] denial” because “the court and parties have invested sufficient time in the parallel proceeding to favor denial.” Fintiv, Paper 11 at 9–10.” slip op. at 7
Discretionary denialPatents in suitUS 7,747,217 - Google LLC v. Personalized Media Communications, LLCRehearing deniedPTAB · Nov 5, 2020 · IPR2020-00723 · APJ John F Horvath · IPR · Rehearing
The Board denied Google’s rehearing request and maintained its denial of institution, finding the Fintiv factors favored discretionary denial under § 314(a).
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Standard for Reconsideration When rehearing a decision on petition, the Board will review the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). “An abuse of discretion occurs if the decision: (1) is clearly unreasonable, arbitrary, or fanciful; (2) is based on an erroneous conclusion of law; (3) rests on clearly erroneous fact findings; or (4) involves a record that contains no evidence on which the Board could rationally base its decision.” Redline Detection, LLC v. Star Envirotech, Inc., 811 F.3d 435, 442 (Fed. Cir. 2015) (internal citations omitted). A request for rehearing “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.” 37 C.F.R. § 42.71(d). The burden of showing a decision should be modified on a request for rehearing lies with the party challenging the decision. Id.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“D. Balancing the Fintiv Factors for Abuse of Discretion We have considered carefully the arguments and evidence before us in view of the Fintiv factors Petitioner relies upon to argue we erred in our Decision. As we discussed previously, our analysis is fact driven, and no single factor is determinative of whether we exercise our discretion to deny institution under § 314(a). Fintiv factor 6 does not weigh in favor of institution because the strength of the merits are not clear and it would be inefficient to expend the resources needed to provide clarity given the significant resources already spent by the parties and the District Court. In any case, we considered a balanced assessment of all factors as required by Fintiv, including the investment in claim construction and discovery (factor 3), the pending trial date1 (factor 1), and the fact that there is no difference between the parties (factor 5), and concluded that the balance of the Fintiv factors weighed in favor of exercising our discretion to deny institution. Petitioner’s arguments show no misapprehension of our analysis or weighing of the Fintiv factors. Although Petitioner would have us weigh the factors differently, disagreement with how the Board weighed the factors is not a proper basis for requesting rehearing nor is it evidence that our Decision mistook Fintiv or overlooked or misapprehended any Fintiv factors.” slip op. at 8
Discretionary denialPatents in suitUS 7,747,217 - Google LLC v. Personalized Media Communications, LLCRehearing deniedPTAB · Nov 5, 2020 · IPR2020-00719 · APJ Georgianna W Braden · IPR · Rehearing
The Board denied Google’s rehearing request and left in place its denial of institution, finding no abuse of discretion in its Fintiv analysis.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“B. Standard for Reconsideration When rehearing a decision on petition, the Board will review the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be determined if a decision: (1) is clearly unreasonable, arbitrary, or fanciful; (2) is based on an erroneous conclusion of law; (3) rests on clearly erroneous fact findings; or (4) involves a record that contains no evidence on which the Board could rationally base its decision. Redline Detection, LLC v. Star Envirotech, Inc., 811 F.3d 435, 442 (Fed. Cir. 2015). The party challenging the decision has the burden of showing the decision should be modified, and the request for rehearing must specifically identify all matters the party believes the Board misapprehended or overlooked and the place where each matter was previously addressed in its papers. 37 C.F.R. § 42.71(d).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“factor 6 and disagree that we misapprehended or overlooked this Fintiv factor. In the Decision to Deny Institution, we did not consider the merits because we determined after a brief consideration of the prosecution history that “significant resources . . . will be required to resolve issues of claim construction to reach preliminary conclusions on the merits of the Petition.” Dec. 16. Although Fintiv provides that review includes a balanced assessment of all the factors, including the merits, here, even if we assumed that factor 6 weighed toward institution, we would still deny institution because of the significant weight of the other Apple v. Fintiv factors against institution in this case. As explained in our Decision to Deny Institution, the goal of the Fintiv balanced assessment is to determine “whether efficiency and integrity of the system are best served by denying or instituting review.” Dec. 15 (quoting Fintiv, Paper 11 at 6). In other words, the review of the prosecution history revealed that the merits of the Petition were not so sufficiently clear that we could reach a preliminary conclusion that the merits outweighed the other Fintiv factors we considered, such as the resources already expended by the parties and the timing of the district court hearing.” slip op. at 6
Discretionary denialcites PhillipsPatents in suitUS 8,739,241 - Google LLC v. Personalized Media Communications, LLCRehearing deniedPTAB · Nov 5, 2020 · IPR2020-00720 · APJ Jon M Jurgovan · IPR · Rehearing
The Board denied Google’s rehearing request and left in place its § 314(a) denial of review based on the balance of the Fintiv factors.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“B. Standard of Review When rehearing a decision on a petition, the Board will review the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be determined if a decision: (1) is clearly unreasonable, arbitrary, or fanciful; (2) is based on an erroneous conclusion of law; (3) rests on clearly erroneous fact findings; or (4) involves a record that contains no evidence on which the Board could rationally base its decision. Redline Detection, LLC v. Star Envirotech, Inc., 811 F.3d 435, 442 (Fed. Cir. 2015) (internal citations omitted). The party challenging the decision has the burden of showing a decision should be modified, and the request for rehearing must specifically identify all matters the party believes the Board misapprehended or overlooked and the place where each matter was previously addressed in its papers. 37 C.F.R. § 42.71(d).” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDecided for patent owner
“(Nov. 2019)1 (“TPG”). When a patent owner raises an argument for discretionary denial due to the advanced state of a parallel proceeding, the Board has set forth several factors that it will consider to balance considerations of system efficiency, fairness, and patent quality. See Fintiv, Paper 11 at 5–6. These factors include: 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. at 6. [“I]n evaluating these factors, the Board takes a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Id.” slip op. at 4
Discretionary denialPatents in suitUS 8,601,528 - Google LLC v. Personalized Media Communications, LLCRehearing deniedPTAB · Nov 5, 2020 · IPR2020-00724 · APJ Jon M Jurgovan · IPR · Rehearing
The Board denied Google’s rehearing request and maintained its discretionary denial of IPR for claims 1 and 2 based on the Fintiv factors.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be determined if a decision: (1) is clearly unreasonable, arbitrary, or fanciful; (2) is based on an erroneous conclusion of law; (3) rests on clearly erroneous fact findings; or (4) involves a record that contains no evidence on which the Board could rationally base its decision. Redline Detection, LLC v. Star Envirotech, Inc., 811 F.3d 435, 442 (Fed. Cir. 2015) (internal citations omitted). The party challenging the decision has the burden of showing a decision should be modified, and the request for rehearing must specifically identify all matters the party believes the Board misapprehended or overlooked and the place where each matter was previously addressed in its papers. 37 C.F.R. § 42.71(d).” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“Fintiv expressly provides that “district court claim construction orders may indicate that the court and parties have invested sufficient time in the parallel proceeding to favor denial.” Fintiv, Paper 11, 10. In other words, Fintiv holds that a district court’s investment in issuing a claim construction order weighs toward, not against, exercising discretion to deny institution. This is particularly true here, where, as noted in our Decision, the district court issued a 94-page claim construction order. Dec. 7.” slip op. at 6
Discretionary denialPatents in suitUS 7,769,344 - Google LLC v. Personalized Media Communications, LLCInstitution deniedPTAB · Aug 31, 2020 · IPR2020-00722 · APJ John F Horvath · IPR · Institution
The Board denied institution of IPR challenging claims 1–3, 9, 11, 12, 16–18, and 20–22, exercising § 314(a) discretion based on the Fintiv factors.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“consider “events in other proceedings related to the same patent, either at the Office, in district courts, or the ITC.” Consolidated Trial Practice Guide November 20193 (“TPG”) at 58. When a patent owner raises an argument for discretionary denial due to the advanced state of a parallel proceeding, the Board has set forth several factors that it will consider to balance considerations of system efficiency, fairness, and patent quality. See Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5–6 (PTAB Mar. 20, 2020) (precedential). These factors include: 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. at 6. “[I]n evaluating these factors, the Board takes a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Id.” slip op. at 5
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied fintivInstitution denied
“tremendous resources that will be required to resolve issues of claim construction, let alone to reach even preliminary conclusions on the merits of the Petition. Given the significant resources already expended by the parties and the District Court in the related district court case, it would be an inefficient use of the Board’s resources to perform a full merits analysis to determine whether the merits outweigh the Fintiv factors discussed above when the District Court will likely have performed a full merits analysis and issued a final decision on the merits more than 10 months before we can do so. Accordingly, this factor weighs in favor of exercising our discretion to deny institution. III. CONCLUSION As discussed above, Fintiv factor 1 is neutral, Fintiv factors 2, 3, 5 and 6 favor denying institution, and Fintiv factor 4 weighs in favor of not denying institution. Among the factors presented in this case, the most significant are the complexity of this case, the substantial resources the District Court and the parties already have expended getting ready for trial, and the soon approaching trial date. These facts outweigh Petitioner’s narrow stipulation. Given these facts, we find institution of inter partes review would be an inefficient use of the Board’s resources and, therefore, exercise our discretion to deny institution of inter partes review. IV. ORDER It is ORDERED that the Petition for inter partes review is denied.” slip op. at 12
Discretionary denialPatents in suitUS 7,747,217 - Google LLC v. Personalized Media Communications, LLCInstitution deniedPTAB · Aug 31, 2020 · IPR2020-00723 · APJ John F Horvath · IPR · Institution
The Board denied institution of IPR challenging claims 1–3, 9, 11, 12, 16–18, and 20–22, exercising § 314(a) discretion under Fintiv.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“consider “events in other proceedings related to the same patent, either at the Office, in district courts, or the ITC.” Consolidated Trial Practice Guide November 20193 (“TPG”) at 58. When a patent owner raises an argument for discretionary denial due to the advanced state of a parallel proceeding, the Board has set forth several factors that it will consider to balance considerations of system efficiency, fairness, and patent quality. See Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5–6 (PTAB Mar. 20, 2020) (precedential). These factors include: 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. at 6. “[I]n evaluating these factors, the Board takes a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Id.” slip op. at 5
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied fintivInstitution denied
“35 U.S.C. §§ 6 and 314(a), and 37 C.F.R. § 42.4 (a). Upon consideration of the Petition, Preliminary Response, Reply, and Sur-Reply, we exercise our discretion to decline institution of inter partes review.” slip op. at 2
Discretionary denialPatents in suitUS 7,747,217
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.