- TCL Electronics Holdings Ltd. (F/K/A TCL Multimedia Technology Holdings, Ltd.) v. Maxell, Ltd.Institution deniedPTAB · May 20, 2025 · IPR2025-00135 · APJ John A Hudalla · IPR · Institution
The Board denied institution of IPR on all challenged claims, exercising § 314(a) discretion under Fintiv because the parallel litigation was advanced and trial would precede a final written decision.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“Under the latest applicable guidance, Petitioner’s Sotera stipulation “is highly relevant, but [is] not . . . dispositive by itself.” CAPJ Memo at 2– 3. Accordingly, we consider Petitioner’s stipulation “as part of [our] holistic analysis under Fintiv.” Id. at 2. In theory, Petitioner’s stipulation could “mitigate[] any concerns of duplicative efforts between the district court and the Board, as well as concerns of potentially conflicting decisions” regarding unpatentability/ invalidity. Sotera, Paper 12 at 19. We note that Petitioner’s initial invalidity contentions included the two asserted references here, Bennett and Nashida. Although Petitioner served those contentions before the filing of the instant Petition—in which it proffered its stipulation—we cannot discern from the instant record whether Petitioner’s present invalidity positions in the underlying litigation incorporate any aspects of its grounds here based on Bennett and Nashida. Still, we view Petitioner’s stipulation as significantly mitigating potential conflict given the likelihood that the court would hold Petitioner (and its privies) to Petitioner’s representations made here.5” slip op. at 18
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). 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.” The Board, however, has discretion to deny a petition even when a petitioner meets that threshold. Id.; 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.”); NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 (PTAB Sept. 12, 2018) (precedential) (“NHK”). For the reasons that follow, we exercise our discretion under 35 U.S.C. § 314(a) to deny institution of inter partes review.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“controller” that “receive[s] an identifier for identifying a second video content from [an] external mobile terminal” and “acquire[s] the second video content via the internet using said identifier.” Ex. 1001, 20:29–31, 20:46–47, 20:52–55 (alterations and emphasis added). In the Bennett obviousness ground, Petitioner cites Bennett’s control signal that directs display of a video stream on a television screen for teaching the recited “identifier.” Pet. 32 (citing Ex. 1004 ¶ 32). Petitioner further cites Bennett’s teaching of an Internet server as a media source for teaching the “acquire[s]” limitation. Id. at 34 (citing Ex. 1004 ¶ 55). Petitioner alternatively cites its declarant’s testimony and contends that it would have been obvious “to use an identifier such as URL in Bennett’s system to retrieve video content from the Internet.” Id. at 35 (citing Ex. 1003 ¶ 87). Yet Patent Owner’s arguments (see Prelim. Resp. 59–64) call into question whether Bennett teaches or suggests the use of either Bennett’s control signal or a URL to “acquire the second video content via the internet.” In addition, we preliminarily agree with Patent Owner that Petitioner’s arguments regarding the URL “focus on justifying an example of what an identifier could be, and fail[] to address a scenario that would justify the receipt of a URL from a phone/remote” in Bennett’s system. Id. at 63. Petitioner’s further contentions for these limitations in the Bennett– Nashida obviousness ground (see Pet. 73–75) do not necessarily cure the deficiencies mentioned by Patent Owner. Petitioner contends that “Nashida discloses the use of identifiers, such as URLs, for retrieving internet content” and cites Nashida’s teaching of “‘controller 1010 transmit[ting] a command of requesting a transmission of a URL’ for retrieving and displaying web content on a display apparatus.” Id. at 73 (quoting Ex. 1005 ¶ 120). Yet, according to Patent Owner, Nashida appears to show the URL moving in the opposite direction of Petitioner’s intended mapping: “It is therefore the image display apparatus (the alleged ‘display apparatus’) that sends the URL to the remote controller . . . , and not the other way around, as claimed by Petitioner.” Prelim. Resp. 67 (citing Ex. 1005 ¶ 1216). At the very least, these issues preclude a finding of “particularly” slip op. at 20
§ 103 obviousnessDiscretionary denialPatents in suitUS 10,219,020 - TCL Electronics Holdings Ltd. (F/K/A TCL Multimedia Technology Holdings, Ltd.) v. Maxell, Ltd.Institution deniedPTAB · May 20, 2025 · IPR2025-00134 · APJ Jason W Melvin · IPR · Institution
The Board denied institution of IPR challenging claims 1–11, 13, and 15–20, finding that the advanced Texas litigation and trial timing outweighed the Petition’s Sotera stipulation.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“September 22, 2025, which is less than four months after the statutory deadline for this Decision and “almost eight months before the projected statutory deadline for a final written decision.” Prelim. Resp. 25 (citing Ex. 2004). Accordingly, the trial is currently set to occur several months before any Final Written Decision in this case will issue. Although trial delays are a possibility, there is no evidence before us that would indicate the likelihood of a trial postponement. Thus, this factor strongly favors discretionary denial.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied fintivInstitution denied
“transmits, over the USB cable, a first signal to the digital camera for causing the digital camera to output compressed first image information.” Petitioner addresses that requirement by asserting Lawther’s interface circuit “can also be adapted to enable exchange data with a connected external device.” Pet. 39 (quoting Ex. 1004 ¶ 50). Although Lawther may “exchange data,” supporting that signals may be sent to a connected camera, Petitioner does not establish that such a signal would have been used as claimed. It may be that such a signal is inherently present in the interactions Lawther describes, but Petitioner does not assert or establish so, only that Lawther has the capability to “exchange data” with a connected camera. Because of this potential weakness in Petitioner’s showing, we cannot conclude that the Petition presents a particularly strong challenge.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“the Petition does not present a particularly strong challenge, because it inadequately addresses at least one claim limitation. In particular, limitation [1F] requires “USB interface circuitry [that] transmits, over the USB cable, a first signal to the digital camera for causing the digital camera to output compressed first image information.” Petitioner addresses that requirement by asserting Lawther’s interface circuit “can also be adapted to enable exchange data with a connected external device.” Pet. 39 (quoting Ex. 1004 ¶ 50). Although Lawther may “exchange data,” supporting that signals may be sent to a connected camera, Petitioner does not establish that such a signal would have been used as claimed. It may be that such a signal is inherently present in the interactions Lawther describes, but Petitioner does not assert or establish so, only that Lawther has the capability to “exchange data” with a connected camera. Because of this potential weakness in Petitioner’s showing, we cannot conclude that the Petition presents a particularly strong challenge.” slip op. at 9
§ 103 obviousnessDiscretionary denialPatents in suitUS 10,650,780 - Samsung Electronics Co., Ltd. v. Mojo Mobility Inc.Institution deniedPTAB · Feb 9, 2024 · IPR2023-01098 · APJ Michael J Fitzpatrick · IPR · Institution
The Board denied institution on claims 1, 2, 5, 8, and 12, finding the Fintiv factors favored denial and the petition did not present compelling evidence of unpatentability.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“We agree with Patent Owner’s analysis based on the schedule in the district court’s docket control order. Ex. 2007. The fact that the time-to-trial statistics cited by Petitioner predict that a trial in May 2024 (Pet. 89), a date even earlier than the trial date set in the court’s docket control order, confirms that the schedule set by the district court is credible and should be given weight. We are not persuaded by Petitioner’s argument that diligence in filing the Petition “in advance of the one-year bar date and within four months of PO’s infringement contentions in the Texas Litigation” should weigh in favor of institution. Pet. 89. As the Texas Litigation is scheduled to go to trial in August 2024, approximately six months before a final written decision would be entered, we determine that Factor 2 weighs in favor of discretionary denial.” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Patent Owner persuasively argues that Odendaal’s planar coil is not a simple drop-in replacement for Okada’s tapped solenoid, as the Petition seems to suggest. Id. at 40. The Petition states only that a person of ordinary skill would have had reason to modify Okada to use a primary coil that is substantially planar and substantially parallel to the surface to expand or complement Okada’s thin-form charging applications. Pet. 17 (citing Ex. 1002, Baker Decl. ¶¶ 138–139; Ex. 1005, Figs 1, 9, 10–16, ¶¶ 33–34, 116– 146). Petitioner’s argument that reducing the distance between primary and secondary would promote close proximity couple, reduce energy waste, and shorten charging time fails to address salient issues underlying the combination. Id. (citing Ex. 1002, Baker Decl. ¶¶ 50–53, 138–139; Ex. 1008, 2:29–44; Ex. 1005 ¶¶ 66–68, 112, Figs. 4(a)–4(b); Ex. 1036, 24:19– 22). Although Okada is premised on a multi-section primary coil, the Petition does not identify any multi-tap planar coil or explain why a person of ordinary skill would have had reason to modify Odendaal’s planar coil to add taps to it. Moreover, the Petition does not explain how a person of ordinary skill attempting to exchange Okada’s multi-section solenoid coil with a planar coil could add multiple taps to said primary coil to create multiple sections and access those sections. As Patent Owner points out, utilizing multi-tap solenoid coils, Okada relies on detection of the degree of coupling/alignment between the communication section of the primary side of the coil and a secondary coil to determine whether there is correct alignment for power delivery sections of the primary and secondary sections of the coil. See Prelim. Resp. 38. The Petition does not address how of Okada. On this record it appears that Petitioner’s proposed modification would render Okada’s primary-side coil inoperable for communicating carrier waves or controlling the level of power at which it induces a current in the secondary-side coil. See Shimano, Inc. v. Globeride, Inc., IPR2015- 00273, Paper 40 at 12 (Final Written Decision) (PTAB Jun 16, 2016) (citing In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984) as standing for the proposition that a case of obviousness is undermined if modifying the prior art would render that prior art inoperable for its intended purpose). In consideration of the above, we are not persuaded that Petitioner has cited sufficient evidence to support its contention that a person of ordinary skill would have had reason to combine the teachings of Okada and Odendaal.” slip op. at 28
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“Patent Owner persuasively argues that Odendaal’s planar coil is not a simple drop-in replacement for Okada’s tapped solenoid, as the Petition seems to suggest. Id. at 40. The Petition states only that a person of ordinary skill would have had reason to modify Okada to use a primary coil that is substantially planar and substantially parallel to the surface to expand or complement Okada’s thin-form charging applications. Pet. 17 (citing Ex. 1002, Baker Decl. ¶¶ 138–139; Ex. 1005, Figs 1, 9, 10–16, ¶¶ 33–34, 116– 146). Petitioner’s argument that reducing the distance between primary and secondary would promote close proximity couple, reduce energy waste, and shorten charging time fails to address salient issues underlying the combination. Id. (citing Ex. 1002, Baker Decl. ¶¶ 50–53, 138–139; Ex. 1008, 2:29–44; Ex. 1005 ¶¶ 66–68, 112, Figs. 4(a)–4(b); Ex. 1036, 24:19– 22). Although Okada is premised on a multi-section primary coil, the Petition does not identify any multi-tap planar coil or explain why a person of ordinary skill would have had reason to modify Odendaal’s planar coil to add taps to it. Moreover, the Petition does not explain how a person of ordinary skill attempting to exchange Okada’s multi-section solenoid coil with a planar coil could add multiple taps to said primary coil to create multiple sections and access those sections. As Patent Owner points out, utilizing multi-tap solenoid coils, Okada relies on detection of the degree of coupling/alignment between the communication section of the primary side of the coil and a secondary coil to determine whether there is correct alignment for power delivery sections of the primary and secondary sections of the coil. See Prelim. Resp. 38. The Petition does not address how of Okada. On this record it appears that Petitioner’s proposed modification would render Okada’s primary-side coil inoperable for communicating carrier waves or controlling the level of power at which it induces a current in the secondary-side coil. See Shimano, Inc. v. Globeride, Inc., IPR2015- 00273, Paper 40 at 12 (Final Written Decision) (PTAB Jun 16, 2016) (citing In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984) as standing for the proposition that a case of obviousness is undermined if modifying the prior art would render that prior art inoperable for its intended purpose). In consideration of the above, we are not persuaded that Petitioner has cited sufficient evidence to support its contention that a person of ordinary skill would have had reason to combine the teachings of Okada and Odendaal.” slip op. at 28
- Skill levelSkill level petitioner adoptedDecided for petitioner
“ordinarily skilled artisan”) as one having “at least a master’s degree in electrical engineering, or a similar discipline, and two or more years of experience with wireless charging systems, including, for example, inductive power transfer systems.” Pet. 4 (citing Ex. 1002, Declaration of Dr. R. Jacob Baker (“Baker Decl.”) ¶¶ 20–21). Petitioner further states that slip op. at 18
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,462,942 - Samsung Electronics Co., Ltd. v. Mojo Mobility Inc.Institution deniedPTAB · Feb 9, 2024 · IPR2023-01094 · APJ Michael J Fitzpatrick · IPR · Institution
The Board denied institution because Fintiv favored discretionary denial and the petition did not present compelling evidence that claims 1–4, 8, and 11–12 were unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“approximately six months before a final written decision would be entered, we determine that Factor 2 weighs in favor discretionary denial.” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Petition does not identify any multi-tap planar coil or explain why a person of ordinary skill would have had reason to modify Odendaal’s planar coil to add taps to it. Moreover, the Petition does not explain how a person of ordinary skill attempting to exchange Okada’s multi-section primary with a planar coil would modify Odendaal’s coil to add multiple taps to create multiple section and access those sections. As Patent Owner points out, utilizing multi-tap solenoid coils, Okada relies on detection of the degree of coupling/alignment between the communication section of the primary side of the coil and a secondary coil to determine whether there is correct alignment for power delivery sections of the primary and secondary sections of the coil. See Prelim. Resp. 37. The Petition does not address how Odendaal’s planar could would be incorporated to provide this important functionality of Okada. On this record it appears that Petitioner’s proposed modification would render Okada’s primary-side coil inoperable for communicating carrier waves or controlling the level of power at which it induces a current in the secondary-side coil. See Shimano, Inc. v. Globeride,” slip op. at 28
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Petition does not identify any multi-tap planar coil or explain why a person of ordinary skill would have had reason to modify Odendaal’s planar coil to add taps to it. Moreover, the Petition does not explain how a person of ordinary skill attempting to exchange Okada’s multi-section primary with a planar coil would modify Odendaal’s coil to add multiple taps to create multiple section and access those sections. As Patent Owner points out, utilizing multi-tap solenoid coils, Okada relies on detection of the degree of coupling/alignment between the communication section of the primary side of the coil and a secondary coil to determine whether there is correct alignment for power delivery sections of the primary and secondary sections of the coil. See Prelim. Resp. 37. The Petition does not address how Odendaal’s planar could would be incorporated to provide this important functionality of Okada. On this record it appears that Petitioner’s proposed modification would render Okada’s primary-side coil inoperable for communicating carrier waves or controlling the level of power at which it induces a current in the secondary-side coil. See Shimano, Inc. v. Globeride, 2016) (citing In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984) as standing for the proposition that a case of obviousness is undermined if modifying the prior art would render that prior art inoperable for its intended purpose). In consideration of the above, we are not persuaded that Petitioner has cited sufficient evidence to support its contention that a person of ordinary skill would have had reason to combine the teachings of Okada and Odendaal.” slip op. at 28
§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,316,371 - Samsung Electronics Co., Ltd. v. Mojo Mobility Inc.Institution deniedPTAB · Feb 6, 2024 · IPR2023-01099 · APJ Michael J Fitzpatrick · IPR · Institution
The Board denied institution on claims 21–26 because the Fintiv factors favored discretionary denial and the petition did not present compelling evidence of unpatentability.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“It strikes us as inefficient to conduct, in parallel with the Texas Litigation, numerous inter partes reviews of the same seven patents. This is particularly the case here where the best available evidence indicates that the Texas Litigation will go to trial approximately six months prior to when a final written decision would be entered if inter partes review were to be instituted. Thus, this additional reason weighs in favor of discretionary denial. G. Fintiv Conclusion As a whole, the Fintiv factors weigh in favor of discretionary denial of the Petition, with factor 1 being neutral, factors 2, 3, 5, and 6 weighing in favor of discretionary denial and factor 4 weighing slightly against it. However, we “will not deny institution based on Fintiv if there is compelling evidence of unpatentability.” CommScope Techs. LLC v. Dali Wireless Inc., No. IPR2022-01242, Paper 23 at 4 (PTAB Feb. 27, 2023) (precedential) (“CommScope”). Thus, we now consider the merits of the Petition under this higher standard.” slip op. at 16
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied
“III. ANALYSIS UNDER COMPELLING MERITS STANDARD “[T]he compelling merits standard is a higher standard than the standard for institution set by statute.” Commscope at 3 (referring to 35 U.S.C. § 314(a)). “[W]hen determining whether there is a compelling unpatentability challenge, the Board evaluates whether the Petition presents challenges in which the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Id. (quotation marks and citation omitted). Put another way, the compelling merits standard is satisfied “if it is highly likely that the petitioner would prevail with respect to at least one challenged claim.” Id. at 4 (citation omitted). For the reasons explained below, the Petition fails to meet this standard.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“The Petition’s reason for why a person of ordinary skill in the art allegedly would have made the proposed modification, i.e., “to expand/compliment applications compatible with those contemplated by Okada to use thin(ner) devices” (Pet. 20), is not persuasive. Rather, it appears, based on the record presented, that the proposed modification would render Okada’s primary-side coil inoperable for communicating carrier waves or controlling the level of power at which it induces a current in the secondary-side coil. See Ratti, 270 F.2d at 813 (A combination of references is “not a proper ground for rejection” where it “would require a substantial reconstruction and redesign of the elements shown [in the prior art] as well as a change in the basic principles under which [the prior art] construction was designed to operate.”); In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984) (reversing BPAI decision affirming obviousness rejection where a proposed modification to the prior art would have “rendered [it] inoperable for its intended purpose”). For these reasons, the Petition does not present “compelling evidence of unpatentability.” Commscope at 4.” slip op. at 26
- Obviousness (§103) › KSR rationalesNot reached
“The Petition’s reason for why a person of ordinary skill in the art allegedly would have made the proposed modification, i.e., “to expand/compliment applications compatible with those contemplated by Okada to use thin(ner) devices” (Pet. 20), is not persuasive. Rather, it appears, based on the record presented, that the proposed modification would render Okada’s primary-side coil inoperable for communicating carrier waves or controlling the level of power at which it induces a current in the secondary-side coil. See Ratti, 270 F.2d at 813 (A combination of references is “not a proper ground for rejection” where it “would require a substantial reconstruction and redesign of the elements shown [in the prior art] as well as a change in the basic principles under which [the prior art] construction was designed to operate.”); In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984) (reversing BPAI decision affirming obviousness rejection where a proposed modification to the prior art would have “rendered [it] inoperable for its intended purpose”). For these reasons, the Petition does not present “compelling evidence of unpatentability.” Commscope at 4.” slip op. at 26
Claim construction§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 11,462,942 - Samsung Electronics Co., Ltd. v. Mojo Mobility Inc.Institution deniedPTAB · Feb 6, 2024 · IPR2023-01096 · APJ Michael J Fitzpatrick · IPR · Institution
The Board denied institution on claims 20–23 and 30 because the Fintiv factors favored denial and the petition lacked a compelling unpatentability challenge.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“NHK applies to the situation where the district court has set a trial date to occur earlier than the Board’s deadline to issue a final written decision in an instituted proceeding. In a case where, in contrast to the facts present in NHK, the district court has set a trial date after the Board’s deadline to issue a final written decision in an instituted proceeding, the Board may be less likely to deny institution under 35 U.S.C. § 314(a) based on district court trial timing depending on other factors as set forth below. Fintiv at 3. The instant situation is the former one described above by Fintiv and to which “NHK applies.”” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Here, Petitioner argues that a person of ordinary skill in the art would have “modif[ied] the Okada system to use ‘a receiver coil which has a substantially planar shape and is located parallel to a surface of the portable device’ (and complimented such a design with corresponding planar primary coil).” Pet. 21 (quoting claim 20). Petitioner states that the skilled artisan would have done so “to expand/compliment applications compatible with those contemplated by Okada to use thin(ner) devices.” Id. (citing Ex. 1002 ¶135). The cited declaration testimony repeats this statement and adds that the modification could reduce size and/or weight of a device and, due to the “close proximity of coupling,” could improve power transmission efficiency, reduce energy waste, and shorten charging time. Ex. 1002 ¶135.” slip op. at 22
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“the Petition, with factor 1 being neutral, factors 2, 3, 5, and 6 weighing in favor of discretionary denial and factor 4 weighing slightly against it. However, we “will not deny institution based on Fintiv if there is compelling evidence of unpatentability.” CommScope Techs. LLC v. Dali Wireless Inc., No. IPR2022-01242, Paper 23 at 4 (PTAB Feb. 27, 2023) (precedential) (“CommScope”). Thus, we now consider the merits of the Petition under this higher standard. III. ANALYSIS UNDER COMPELLING MERITS STANDARD “[T]he compelling merits standard is a higher standard than the standard for institution set by statute.” CommScope at 3 (referring to 35 U.S.C. § 314(a)). “[W]hen determining whether there is a compelling unpatentability challenge, the Board evaluates whether the Petition presents challenges in which the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Id. (quotation marks and citation omitted). Put another way, the compelling merits standard is satisfied “if it is highly likely that the petitioner would prevail with respect to at least one challenged claim.” Id. at 4 (citation omitted). For the reasons explained below, the Petition fails to meet this standard.” slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not dispute Petitioner’s description of a person of ordinary skill in the art or provide its own description. Because Petitioner’s formulation of the level of ordinary skill in the art appears consistent with the ’371 patent and the asserted prior art, and because there is no argument to the contrary at this stage of the proceeding, we apply it in our analysis below.” slip op. at 19
Claim construction§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 11,316,371 - Samsung Electronics Co., Ltd. v. California Institute Of TechnologyInstitution deniedPTAB · May 4, 2023 · IPR2023-00133 · APJ Ken B Barrett · IPR · Institution
The Board denied institution under Fintiv because the advanced parallel litigation outweighed the stipulation, and the petition did not present compelling merits for any challenged claim.
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
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“We agree that Kobayashi provides scant details on the operation of its outer encoder, which Petitioner attempts to fill in with expert testimony on Hamming coders and matrix multiplication generally. See Ex. 1002 ¶¶ 28– 35, 65. Patent Owner, on the other hand, provides argument based on Kobayashi’s disclosure and Petitioner’s own characterization of that disclosure that appears, on this record, to contradict Petitioner’s arguments. Even if, hypothetically, we were to deem Petitioner’s showing on the record before us to be adequate under the lesser reasonable likelihood standard (again, a finding we do not make), we apply a higher compelling merits standard for our analysis of the sixth Fintiv factor, and find Petitioner has not met that higher standard. 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.” slip op. at 31
§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,421,032 - 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 · 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
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.