- Samsung Electronics Co., Ltd. v. California Institute Of TechnologyInstitution deniedPTAB · May 4, 2023 · IPR2023-00130 · APJ Amber L Hagy · IPR · Institution
The Board denied institution on all challenged claims under § 314(a), finding the advanced parallel litigation outweighed the stipulation and the merits were not compelling.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“The district court has already denied a motion for a stay, and the reasoning in its decision on the motion indicates that the court is unlikely to grant a renewed motion. See Ex. 2002, 5–6 (finding that the advanced stage of the underlying litigation disfavors a stay and that a stay is unlikely to simplify the issues in the underlying litigation). Thus, we find that this factor weighs in favor of exercising authority to deny institution. See Fintiv, Paper 11 at 6–7.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“In short, on the record before us, for the reasons noted above, we do not view Petitioner’s evidence as plainly leading to a conclusion that one or more claims are unpatentable by a preponderance of the evidence. See Interim Procedure 4. We, therefore, find Petitioner’s showing as to the independent claims is not compelling. Petitioner’s arguments for the dependent claims and the other grounds (including the ground based on the combination with McEliece) (Pet. 19–56) do not cure the above deficiencies. Thus, Petitioner’s showing of unpatentability is not compelling for any of the challenged claims under any of the asserted grounds.” slip op. at 29
§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,116,710 - Samsung Electronics Co., Ltd. v. California Institute Of TechnologyInstitution deniedPTAB · May 4, 2023 · IPR2023-00131 · APJ John A Hudalla · IPR · Institution
The Board denied institution for claims 3–18 and 22 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)Denied
“The district court has already denied a motion for a stay, and the reasoning in its decision on the motion indicates that the court is unlikely to grant a renewed motion. See Ex. 2002, 5–6 (finding that the advanced stage of the underlying litigation disfavors a stay and that a stay is unlikely to simplify the issues in the underlying litigation). Thus, we find that this factor weighs in favor of exercising authority to deny institution. See Fintiv, Paper 11 at 6–7.” slip op. at 14
- BurdenNot reached
“Although we need not fully resolve these issues for our “compelling merits” determination, we note that Patent Owner makes several arguments that call into question whether Petitioner would ultimately succeed with its unpatentability challenges relative to its analysis for the recited “codeword.” Petitioner’s contentions hinge on its assertion that an ordinarily skilled artisan “would have understood that this encoded sequence I4 is a codeword because the output of an encoder such as Kobayashi’s precoder is a codeword.” Pet. 15 (citing Ex. 1002 ¶ 68).8 We agree with Patent Owner that Petitioner’s analysis appears to (1) rely on circular reasoning; and (2) run counter to Kobayashi’s disclosure of the inner encoder in Figure 8 as comprising both the precoder and duobinary signaling blocks. See Ex. 1005, 7:9–11, Fig. 8. We also have considered Dr. Valenti’s testimony that an ordinarily skilled artisan would have understood the output of Kobayashi’s precoder to be a codeword. See Ex. 1002 ¶ 45. In support of this testimony, Dr. Valenti cites only general background testimony on error control coding and Kobayashi’s use of “codeword” with respect to the Hamming encoder. See id. Yet Dr. Valenti’s background testimony does not address whether an ordinarily skilled artisan would have regarded a precoder alone to be an 8 Petitioner cites to paragraph 68 of Dr. Valenti’s declaration, but his more relevant testimony supporting this proposition is found at paragraph 45, which we discuss below. encoder. See id. ¶¶ 24–27. And Kobayashi’s characterizations regarding the output of the Hamming encoder, which is a different element, do not necessarily apply to the precoder, which is only a portion of Kobayashi’s inner encoder. See Ex. 1005, 7:50–8:2. Thus, even if we were to find that Petitioner’s contentions support a reasonable likelihood of unpatentability, we would have significant open questions for resolution at trial. Under these circumstances, and based on the present record, we do not find “compelling merits” because Petitioner’s challenges do not plainly lead to a conclusion that one or more claims are unpatentable. For purposes of our analysis under Fintiv, we weigh the merits as being neutral.” slip op. at 22
Discretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,916,781 - PTAB · Jan 19, 2023 · IPR2022-01233 · APJ Neil T Powell · IPR · Institution
The Board denied institution of review of claims 1–10, 13, 14, 16, and 21 under § 314(a), finding the Fintiv factors decisively favored discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“§ 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”)8. 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; 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 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied
“whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). We may institute an inter partes review if the information presented in the petition filed under 35 U.S.C. § 311, and any preliminary response filed under § 313, shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition. 35 U.S.C. § 314(a). However, we have discretion to deny a petition even if a petitioner satisfies the “reasonable likelihood” threshold standard for instituting trial. See, e.g., Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016) (“[T]he agency’s decision to deny a petition is a matter committed to the Patent Office’s discretion.”). Based on the current record and for the reasons explained below, we exercise our discretion under 35 U.S.C. § 314(a) to deny institution of an inter partes review of the ’071 patent.” slip op. at 2
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“We do not agree with Petitioner’s assertion that it presents a “compelling unpatentability challenge.” Pet. 86; Reply 2–5. Weighing the arguments and evidence presently of record, we do not find Petitioner’s evidence sufficient to “plainly” result in a conclusion of unpatentability. Fintiv Memo 5 n.6; Pet. 9–81; Prelim. Resp. 16–43. For example, in the challenge based on Kim, we do not find Petitioner’s evidence regarding claim elements [1.4] and [21.3] sufficient to plainly lead to a conclusion of unpatentability. See Pet. 12–18, 28; Prelim. Resp. 21–25. We find significant merit in Patent Owner’s position that Petitioner fails to address persuasively limitation [1.4]’s recitation of “distinguishing the information simultaneously received from each of the transmitting nodes according to their respective said unique estimated signal parameters” and similar language in element [21.3]. Prelim. Resp. 21–25. Patent Owner presents viable arguments that Petitioner addresses this claim language with evidence that is unavailing, for instance, because it relates to Kim’s request channel, whereas Petitioner’s evidence for earlier, related limitations relates to traffic data. Id. As another example, we find significant merit in Patent Owner’s position that Petitioner’s Baum-based challenge relies on different embodiments of Baum without providing sufficiently persuasive evidence that the different embodiments would apply to one another. See Pet. 75–76 (relying on “joint detection”); Prelim. Resp. 41 (“First, the Petition combines multiple embodiments from Baum, but without any explanation of why the teachings relating to the non-joint detection embodiment would apply to the joint detection embodiment so as to teach distinguishing the individual signal components of the ‘joint desired signal.’”); see also Reply 5; Sur-reply 5. Petitioner apparently views the disclosures in Baum’s columns 18–21 as all discussing the same embodiment, but Petitioner does not provide sufficiently persuasive support for this position. See Pet. 75–76; Reply 5.” slip op. at 17
- BurdenNot reached
“We do not agree with Petitioner’s assertion that it presents a “compelling unpatentability challenge.” Pet. 86; Reply 2–5. Weighing the arguments and evidence presently of record, we do not find Petitioner’s evidence sufficient to “plainly” result in a conclusion of unpatentability. Fintiv Memo 5 n.6; Pet. 9–81; Prelim. Resp. 16–43. For example, in the challenge based on Kim, we do not find Petitioner’s evidence regarding claim elements [1.4] and [21.3] sufficient to plainly lead to a conclusion of unpatentability. See Pet. 12–18, 28; Prelim. Resp. 21–25. We find significant merit in Patent Owner’s position that Petitioner fails to address persuasively limitation [1.4]’s recitation of “distinguishing the information simultaneously received from each of the transmitting nodes according to their respective said unique estimated signal parameters” and similar language in element [21.3]. Prelim. Resp. 21–25. Patent Owner presents viable arguments that Petitioner addresses this claim language with evidence that is unavailing, for instance, because it relates to Kim’s request channel, whereas Petitioner’s evidence for earlier, related limitations relates to traffic data. Id. As another example, we find significant merit in Patent Owner’s position that Petitioner’s Baum-based challenge relies on different embodiments of Baum without providing sufficiently persuasive evidence that the different embodiments would apply to one another. See Pet. 75–76 (relying on “joint detection”); Prelim. Resp. 41 (“First, the Petition combines multiple embodiments from Baum, but without any explanation of why the teachings relating to the non-joint detection embodiment would apply to the joint detection embodiment so as to teach distinguishing the individual signal components of the ‘joint desired signal.’”); see also Reply 5; Sur-reply 5. Petitioner apparently views the disclosures in Baum’s columns 18–21 as all discussing the same embodiment, but Petitioner does not provide sufficiently persuasive support for this position. See Pet. 75–76; Reply 5.” slip op. at 17
§ 103 obviousnessDiscretionary denialPatents in suitUS 9,814,071 - 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 - 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 - Intel Corporation v. VLSI Technology LLCRehearing deniedPTAB · Feb 19, 2021 · IPR2020-00527 · APJ Kimberly Mcgraw · IPR · Rehearing
The Board denied Intel’s rehearing requests and left in place its § 314(a) denial of institution in both proceedings based on the Fintiv factors.
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).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for patent owner
“Petitioner has not shown that this change in circumstance warrants modifying (1) the determination that Fintiv factor 4 weighs in favor of exercising discretion to deny institution or (2) the determination, after weighing all factors and taking a holistic view of the relevant circumstances, to exercise discretion to deny institution. Several of the claims challenged in each Petition are still at issue in the parallel proceeding, and the combinations of references asserted by Petitioner in the district court largely overlap with the combinations of references asserted in the Petitions. Petitioner has not identified any differences among the claims that have been dropped and the claims that remain as a reason to modify our Decision. See Fintiv, Paper 11 at 13 (“if a petition involves the same prior art challenges but challenges claims in addition to those that are challenged in the district court, it may still be inefficient to proceed because the district court may resolve validity of enough overlapping claims to resolve key issues in the petition”).” slip op. at 5
Discretionary denialPatents in suitUS 6,633,187 - Intel Corporation v. VLSI Technology LLCRehearing deniedPTAB · Feb 19, 2021 · IPR2020-00526 · APJ Kimberly Mcgraw · IPR · Rehearing
The Board denied Intel’s rehearing requests, leaving institution denied in both proceedings based on its Fintiv analysis of the parallel litigation.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS A party requesting rehearing bears the burden of showing that the 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).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for patent owner
“noted that, “[e]ven if Petitioner’s contentions are true, Petitioner has not shown these contentions will avoid adjudication of Intel’s invalidity defenses” in the related Western District of Texas litigation. Dec. Inst. 13. In light of the record at the time, we found that Petitioner’s arguments in connection with Fintiv factor 6 did not weigh against exercising our discretion to deny institution. Id. at 13–15. Accordingly, we maintain our finding that Petitioner’s argument does not weigh against exercising our discretion to deny institution.” slip op. at 4
Discretionary denialPatents in suitUS 6,633,187 - Intel Corporation v. VLSI Technology LLCRehearing deniedPTAB · Feb 11, 2021 · IPR2020-00582 · APJ Bart A Gerstenblith · IPR · Rehearing
The Board denied Intel’s rehearing request and maintained its discretionary denial of institution under Fintiv, despite weighing Factor 6 neutrally.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS A party requesting rehearing bears the burden of showing that the 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).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“The change in circumstances regarding the trial date does not persuade us to change our decision to exercise our discretion to deny institution. Even if we were to institute an inter partes review proceeding, the deadline for issuing a final written decision could be no earlier than February 2022. Thus, at this time, it appears likely that trial will occur many months before any final written decision would likely issue in this proceeding. Therefore, we maintain our finding that Fintiv Factor 2” slip op. at 4
Discretionary denialPatents in suitUS 7,292,485 - Intel Corporation v. VLSI Technology LLCRehearing deniedPTAB · Jan 20, 2021 · IPR2020-00141 · APJ Kimberly Mcgraw · IPR · Rehearing
The Board denied Intel’s rehearing requests, leaving in place the discretionary denials of institution in both proceedings under the Fintiv framework.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS A party requesting rehearing bears the burden of showing that the 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).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for patent owner
“Our Decisions addressed Petitioner’s allegations regarding Patent Owner’s identity and conduct under Fintiv factor 6 (other circumstances that impact the Board’s exercise of discretion, including the merits), and we noted Patent Owner’s position that Petitioner was improperly attempting to re-litigate issues that were the subject of an antitrust suit pending in the Northern District of California. See, e.g., IPR2020-00141, Paper 16 at 14– 15. We further noted that, “[e]ven if Petitioner’s contentions are true,” slip op. at 3
Discretionary denialPatents in suitUS 6,633,187
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.