- Eunsung Global Corp. v. Hydrafacial LLCInstitution deniedPTAB · Apr 11, 2025 · IPR2024-01491 · APJ Jamie T Wisz · IPR · Institution
The Board denied institution on all challenged claims under § 314(a), finding that the advanced ITC proceeding and substantial overlap made review inefficient.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“When determining whether to exercise discretion to deny institution in view of a parallel litigation, we consider the following factors: 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; 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 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We find that Petitioner’s obviousness challenges meet the standard for institution. We also will not speculate as to whether the other three petitions referenced by Petitioner will be instituted. Taken together with the other” slip op. at 16
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached
“B. Discretionary Denial under 35 U.S.C. § 325(d) Patent Owner asserts that we should deny the Petition under 35 U.S.C. § 325(d) because the Petition presents substantially the same art and arguments that the Office previously analyzed and fails to show that the Office erred during prosecution. See Prelim. Resp. 58–68. Because we exercise discretion to deny institution under 35 U.S.C. § 314(a) for the reasons discussed above, we do not need to reach Patent Owner’s argument regarding denial under § 325(d).” slip op. at 17
Discretionary denialPatents in suitUS 11,865,287 - Samsung Electronics Co., Ltd / Samsung Electronics America, Inc. v. Secure Wi-Fi LLCInstitution deniedPTAB · Mar 24, 2025 · IPR2024-01369 · APJ Christopher L Ogden · IPR · Institution
The Board denied institution under Fintiv, finding the factors holistically favored discretionary denial of review.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“and Trademark Office under 37 C.F.R. § 42.4(a), we may only institute an inter partes review when “the information presented in the petition . . . and any 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.” 35 U.S.C. § 314(a); see also 37 C.F.R. § 42.108(c). However, institution of inter partes review is discretionary. See Harmonic Inc. 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.”). For the reasons below, we exercise our discretion not to institute an inter partes review.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“A holistic balancing of the Fintiv factors weighs in favor of discretionary denial of the Petition. As discussed above, factor 2 weighs heavily in favor of discretionary denial because the district court is likely to address patentability issues at trial before we would issue a final written decision. Factor 4 weighs in favor of discretionary denial, as does Factor 5 at least to some degree. Factors 1 and 6 are neutral. Factor 3 weighs against discretionary denial, but this factor does not outweigh the other factors under the circumstances of this case. Thus, the evidence of record favors exercising our discretion to deny institution of an inter partes review.” slip op. at 19
- Parallel petitionsNot reached
“patent. See Pet. 1; PO Resp. 43; Pet. Reply 4–5; Pet. Sur-reply 3–4. Patent Owner argues that Petitioner failed to justify the filing of two petitions challenging the same patent, and has not provided a ranking of the petitions or explained the differences between the two petitions. Prelim. Resp. 43 (citing Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 2019), https://www.uspto.gov/TrialPracticeGuideConsolidated (“Trial Practice Guide”)). Because Petitioner has subsequently ranked this Petition as the first among the two (Pet. Reply 4–5), and because we deny institution based on the Fintiv factors as discussed above, we need not decide whether it was appropriate for Petitioner to file two petitions challenging the ’552 patent.” slip op. at 19
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Other
“Based on the preliminary evidence, Petitioner has not shown that Vardi’s radio resource database from the server, which includes unauthenticated third-party information, teaches the claimed “authenticated access point list” transmitted by or received from the server. Petitioner has not cited to any evidence that a list including previously connected access points and unauthenticated third-party data constitutes the ordinary and customary meaning of the term “authenticated access point list.” To the extent that Petitioner is arguing that the term should be construed in a way that departs from its ordinary and customary meaning, Petitioner has not pointed to evidence for such a departure in the intrinsic record, and we are aware of no such evidence. We note that the ’522 patent states, “[b]y way of example, but not limitation,” that an “authenticated access point may include . . . an access point previously connected with [the] end device.” Ex. 1001, 4:33–36. But this does not appear to suggest that a prior connection is sufficient to authenticate the access point in the context of the ’552 patent.” slip op. at 18
§ 103 obviousnessDiscretionary denialPatents in suitUS 9,961,552 - Samsung Electronics Co., Ltd / Samsung Electronics America, Inc. v. Secure Wi-Fi LLCInstitution deniedPTAB · Mar 24, 2025 · IPR2024-01368 · APJ Christopher L Ogden · IPR · Institution
The Board denied institution of inter partes review of claims 1–9 under § 314(a), finding the Fintiv factors holistically favored discretionary denial.
RulingsInstitution decision- Parallel petitionsNot reached
“Patent Owner argues that Petitioner failed to justify the filing of two petitions challenging the same patent, and has not provided a ranking of the petitions or explained the differences between the two petitions. Prelim. Resp. 42 (citing Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 2019), https://www.uspto.gov/TrialPracticeGuideConsolidated (“Trial Practice Guide”)). Petitioner responds that its “ranking and explanation was at least implicitly included in the Petition.” Prelim. Reply 4. According to Petitioner, the IPR2024-01369 petition “covers all of the claims identified in Patent Owner’s Infringement Contentions” in the parallel district court proceeding. Id. at 4–5. Thus, the present Petition “ranks second, because it covers claims that have not been asserted against Petitioner in the [parallel district court proceeding].” Id. at 5. Petitioner also notes that the claims asserted in this proceeding “focus on the perspective of a server or access point,” whereas the claims in IPR2024-01369 are from the perspective of an end device. Id.” slip op. at 7
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Based on the preliminary record, it is highly likely that issues bearing on the patentability of the challenged claims will be considered and resolved before we would issue a final written decision. Thus, we determine that the second factor weighs heavily in favor of discretionary denial of the Petition.” slip op. at 12
Discretionary denialPatents in suitUS 9,961,552 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Secure Wi-Fi LLCInstitution deniedPTAB · Mar 24, 2025 · IPR2024-01367 · APJ Frederick C Laney · IPR · Institution
The Board denied institution of IPR challenging claims 1–24, exercising discretion under § 314(a) based on the Fintiv factors.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“same validity issues relating the ’384 patent addressed in this proceeding about five months before we would reach a final determination, we determine that Factor 2 weighs heavily in favor of discretionary denial.” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied
“whether to institute an inter partes review. Applying the standard set forth in 35 U.S.C. § 314(a), we may not institute an inter partes review (also “IPR”) unless the information presented in the petition “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.” However, institution of inter partes review is discretionary. See Harmonic Inc. 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.”). For the reasons stated below, we exercise our discretion not to institute an inter partes review.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
§ 103 obviousnessDiscretionary denialPatents in suitUS 10,694,384 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Secure Wi-Fi LLCInstitution deniedPTAB · Mar 24, 2025 · IPR2024-01366 · APJ Frederick C Laney · IPR · Institution
The Board denied institution of IPR challenging claims 1–17, exercising § 314(a) discretion under Fintiv, chiefly because trial would precede the Board’s final decision and issues substantially overlapped.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“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 these factors. Fintiv, Paper 11 at 6. As discussed above, only Factor 3 weighs against discretionary denial, Factor 1 is neutral, and Factors 2, 4, and 5 weigh in favor of discretionary denial of institution, with Factor 2 weighing heavily in favor. Moreover, Petitioner has not persuasively shown, on this record, that its submitted “Sand” stipulation does much to guard against overlap with its district court invalidity arguments under Factor 4, and likewise, the Petition does not show that the merits of its patentability challenges are particularly strong under Factor 6. Accordingly, we determine that the evidence of record favors exercising our discretion under 35 U.S.C. § 314(a) to deny institution of an inter partes review.” slip op. at 18
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied
“whether to institute an inter partes review. Applying the standard set forth in 35 U.S.C. § 314(a), we may not institute an inter partes review (also “IPR”) unless the information presented in the petition “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.” However, institution of inter partes review is discretionary. See Harmonic Inc. 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.”). For the reasons stated below, we exercise our discretion not to institute an inter partes review.” slip op. at 2
Discretionary denialPatents in suitUS 9,717,005 - Pharaoh Energy Services, LLC v. Flex-Chem Holding Company, LLC, And Flex-Chem Services CorporationInstitution deniedPTAB · Sep 20, 2024 · IPR2024-00822 · APJ Eric C Jeschke · IPR · Institution
The Board denied institution on all challenged claims 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 fintivInstitution denied
“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. Fintiv, Paper 11 at 5‒6. “These factors relate to 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.” Id. at 6. There is some overlap among these factors and some facts may be relevant to more than one factor. Id. In evaluating the factors, the Board takes a holistic view of whether the efficiency and integrity of the system are best served by denying or instituting review. Id.” slip op. at 8
- Expert testimonyPetitioner expert discountedDecided for patent owner
“from his Declaration cited on page 17 of the Petition, however, Dr. Harwell essentially repeats verbatim the conclusions from the Petition quoted above: 98. As such, Ayers discloses that subterraneous formations of metal-polymer complexes may result due to previous injections of fracturing fluid. For example, fracturing fluid containing polyacrylamide, a common polymer additive to fracturing fluid, may intrude the natural formation and have negative interactions in the way of forming a metal-polymer complex with metal ions naturally present in the formation. Harwell Decl. ¶ 98, cited at Pet. 17. Dr. Harwell provides no additional scientific or technical basis for these conclusory restatements of Petitioner’s assertions, and we find Dr. Harwell’s testimony on this issue entitled to little weight. See Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15– 17 (PTAB Aug. 24, 2022) (precedential) (denying institution and determining that testimony of a declarant that merely repeats, verbatim, conclusory assertions from a petition, without citing additional supporting evidence or providing technical reasoning to support the testimony, is entitled to little weight), cited at Prelim. Resp. 31 (arguing that paragraph 98 of the Harwell Declaration “repeats the Petition essentially verbatim and fails to provide any further evidence or explanation on how Ayers discloses (or even suggests) the claimed subject matter”); see also 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). We also view Petitioner’s and Dr. Harwell’s conclusions as lacking because they fail to demonstrate that a “subterranean-formed metal-polymer complex” would necessarily have been present in Ayers’s subterranean formations. Instead, as noted by Patent Owner, both Petitioner and Dr. Harwell can muster only that “subterraneous formations of metal-polymer complexes may result due to previous injections of fracturing fluid” and that “fracturing fluid containing polyacrylamide . . . may intrude the natural formation and have negative interactions in the way of forming a metal-polymer complex . . . .” Pet. 17; Harwell Decl. ¶ 98 (emphasis added); see Prelim. Resp. 31–32 (presenting this argument). Even assuming these statements to be accurate, and even if the statements are unrebutted at trial, they are not sufficient on the record here to demonstrate compelling merits of anticipation. See In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (quoting In re Oelrich, 666 F.2d 578, 581 (CCPA 1981)) (“Inherency . . . may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.”).9” slip op. at 21
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner states—without any supporting evidence—that Patent Owner (assumedly in the Parallel Litigation) has described a person of ordinary skill in the art (“POSITA”) at the time of the alleged invention of the [challenged p]atent [as having] at least a bachelor’s degree in chemistry, chemical engineering, petroleum engineering, geology, or the equivalent, and at least two years of experience in oil and natural gas well treatments, or an equivalent amount of relevant work and/or educational experience. Pet. 5. Petitioner “is prepared to adopt” this definition for this proceeding. Id. Patent Owner “adopts” Petitioner’s proposed definition of the level of ordinary skill in the art, which appears consistent with the record in this proceeding, including the prior art. Prelim. Resp. 10–11; GPAC Inc., 57 F.3d at 1579. For purposes of this Decision, we adopt, and apply below, the definition proposed by Petitioner.” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner does not propose constructions for any claim terms. See Pet. 11–12. In response, Patent Owner “agrees to accept the construction for any claim terms from the [challenged] patent it presented in district court . . . [,] none of which require a construction different from the plain import of the claim language itself.” Prelim. Resp. 12. Based on the current record, we need not construe explicitly any claim terms because doing so would not change the outcome of the analysis below. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 17
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 10,697,282 - Pharaoh Energy Services, LLC v. Flex-Chem Holding Company, LLC, And Flex-Chem Services CorporationInstitution deniedPTAB · Sep 20, 2024 · IPR2024-00815 · APJ Eric C Jeschke · IPR · Institution
The Board denied institution of review of 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 fintivInstitution denied
“currently scheduled to begin on January 14, 2025. Prelim. Resp. 55 (citing Ex. 2003 (Specialized Scheduling Order in the Parallel Litigation) at 2). Based on the date of issuance of this Decision, the beginning of the trial in the Parallel Litigation is over eight months before any final decision would have been due had inter partes review been instituted. This large length of time from the trial in the Parallel Litigation to the due date of the final decision in this proceeding weighs strongly in favor of discretionary denial. As stated in the Guidance Memo, “when considering the proximity of the district court’s trial date to the date when the PTAB final written decision will be due, the PTAB will consider the median time from filing to disposition of the civil trial for the district in which the parallel litigation resides.” Guidance Memo 3. Patent Owner provides median time-to-trial statistics for the Oklahoma District Court, which predict a trial date approximately 26.9 months after the Parallel Litigation’s filing date of April 13, 2023. See Prelim. Resp. 56 (citing Ex. 2005 at 2). Because the predicted trial date—approximately July 17, 2025—still precedes by two months the due date of any final decision had inter partes review been instituted, the statistics provided also weigh in favor of denial of institution. Given the proximity of the current trial date—less than four months from the date of this Decision—and the lack of any indication from the parties that the trial date will not hold or that either party seeks a later trial date, we view this factor as strongly favoring discretionary denial.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied fintivInstitution denied
“in which the evidence, if unrebutted in trial,” show it is “highly likely that the petitioner would prevail with respect to at least one challenged claim.” Guidance Memo 4; OpenSky, Paper 102 at 49. For the reasons above, Petitioner’s arguments and evidence do not satisfy the “compelling merits” standard as to any ground presented. D. Overall Balancing of the Fintiv Factors We have considered the circumstances and facts before us in view of the Fintiv factors. As discussed above, we have determined that the first five Fintiv factors overall weigh in favor of discretionary denial of institution. Moreover, we have further determined that the Petition does not show compelling merits under the sixth Fintiv factor. We therefore conclude that the evidence of record favors exercising our discretion to deny institution. III. CONCLUSION For the reasons above, we exercise our discretion under 35 U.S.C. § 314(a) to deny institution of inter partes review. IV. ORDER Accordingly, it is hereby: ORDERED that the Petition is denied as to all challenged claims, and no inter partes review is instituted.” slip op. at 29
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Harwell Decl. ¶¶ 167–169); see also Prelim. Resp. 28–29 (presenting this argument). In the three relevant paragraphs from his Declaration cited on page 18 of the Petition, Dr. Harwell, however, merely restates, word for word, two disclosures from Frenier8 quoted from the same page of the Petition, and contends (essentially repeating verbatim the statement from the Petition quoted at the beginning of this paragraph): “It would have been obvious to [one of ordinary skill in the art] in light of Frenier to apply the methods and compositions disclosed therein to ‘subterranean formation[s] having low permeability,’ including nano-darcy shale formations.” Harwell Decl. ¶ 169.9 Dr. Harwell provides no additional scientific or technical basis for this conclusory restatement of the Petition’s assertion, and we find Dr. Harwell’s testimony on this issue entitled to little weight. See Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15–17 (PTAB Aug. 24, 2022) (precedential) (denying institution and determining that testimony of a declarant that merely repeats, verbatim, conclusory assertions from a petition, without citing additional supporting evidence or providing technical reasoning to support the testimony, is entitled to little weight), cited at Prelim. Resp. 28–29 (“The Harwell Declaration repeats the same conclusory arguments presented in the petition without further evidence or 8 Page 18 of the Petition quotes column 1, lines 6–9 and column 1, lines 39–54 of Frenier. 9 Paragraphs 167–169 of the Harwell Declaration ostensibly address “Ground II: Claims 1–13 are obvious under 35 U.S.C. § 103(a) over Frenier alone and/or in combination with Reyes.” See Harwell Decl. pp. 40–41. In the discussion of “Ground I: Claims 1, 2, 4, 5, 7, and 13 are Anticipated by Frenier,” however, paragraphs 75–77 include the same or substantially similar statements from Dr. Harwell. Thus, the analysis would be the same even if Petitioner had cited paragraphs 75–77. explanation.”); see also 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). This inadequate showing as to a requirement in limitations 1[b] and 1[c] reveals a lack of compelling merits.” slip op. at 21
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 10. Petitioner “does not fully concur” with this definition of one of ordinary skill in the art but “is prepared to adopt” the definition for this proceeding. Id. Patent Owner “adopts” Petitioner’s proposed definition of the level of ordinary skill in the art, which appears consistent with the record in this proceeding, including the prior art. Prelim. Resp. 10; GPAC Inc., 57 F.3d at 1579. For purposes of this Decision, we adopt, and apply below, the definition proposed by Petitioner.” slip op. at 16
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 9,944,843 - The Hillman Group, Inc. v. Hy-Ko Products Co. LLCInstitution deniedPTAB · May 9, 2022 · IPR2022-00174 · APJ Eric C Jeschke · IPR · Institution
The Board denied institution of IPR on all challenged claims under § 314(a), finding the Fintiv factors and the advanced Texas litigation favored discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“requested in the Texas Litigation. See Apple Inc. v. Fintiv, Inc., IPR2020- 00019, Paper 15 at 12 (PTAB May 13, 2020) (informative) (“A judge determines whether to grant a stay based on the facts of each specific case as presented in the briefs by the parties. We decline to infer, based on actions taken in different cases with different facts, how the District Court would rule should a stay be requested by the parties in the parallel case here.”). We view this factor as neutral because neither of the parties in the Texas Litigation has requested a stay thus far. See id. at 12 (determining that Factor 1 is neutral when neither party has requested a stay and the issue has not been ruled on by the district court).” slip op. at 9
Discretionary denialPatents in suitUS 9,687,920 - PTAB · Apr 13, 2022 · IPR2022-00229 · APJ Eric C Jeschke · IPR · Institution
The Board denied institution for claims 1 and 46 under § 314(a), finding that the Fintiv factors and parallel litigation supported discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“court has stayed or may stay the proceeding pending inter partes review. “A district court stay of the litigation pending resolution of the PTAB trial allays concerns about inefficiency and duplication of efforts.” See Fintiv, Paper 11 at 6.” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied fintivInstitution denied
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2021) (“The Board institutes the trial on behalf of the Director.”). Section 314(a) of Title 35 of the United States Code provides that inter partes review may not be instituted “unless . . . the information presented in the petition . . . 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.” Upon consideration of the evidence and arguments in the Petition as well as the evidence and arguments in the Preliminary Response, for the reasons below and based on the particular facts of this case, we exercise our discretion under 35 U.S.C. § 314(a) and decline to institute inter partes review of the ’040 patent.” slip op. at 2
Discretionary denialPatents in suitUS 7,464,040 - Immersion Systems LLC v. Midas Green Technologies, LLCInstitution deniedPTAB · Jan 31, 2022 · PGR2021-00104 · APJ Frederick C Laney · PGR · Institution
The Board denied institution of PGR challenging claims 1, 5, 6, and 10, exercising discretion under § 324(a) based on the Fintiv factors.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Thus, a jury trial is scheduled to occur in the related district court litigation approximately four months prior to when a final written decision would be statutorily due in this post-grant review, and the district court has indicated that any changes to the schedule, including the trial date, are disfavored. We find these facts weigh in favor of exercising discretion to deny institution under this factor.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundOther
“For example, under Petitioner’s Ground 1, although Petitioner’s and its witness’s (Dr. Mudawar’s) interpretations of the prior art as teaching the claimed subject matter are not unreasonable, the interpretations are not particularly clear or strong. Pet. 14–27. Petitioner pieces together portions from Best, Krajewski, and/or Cray that do not explicitly disclose the claimed subject matter, relying instead on Dr. Mudawar to interpret the references’ disclosures as meeting specific claim limitations. Id. Further, Petitioner, for the most part, asserts that each limitation of, for example, independent claim 1, is individually disclosed by one or more of Best, Krajewski, and/or Cray without clearly explaining how one reference’s disclosed apparatus or system would be specifically modified by the ordinarily skilled artisan in view of the teachings of the others. Id. Moreover, when discussing a motivation to combine Best, Krajewski, and/or Cray, Petitioner relies on the fact that they are directed to analogous art and then, primarily, that the features they teach would achieve the same advantages extolled by the ’446 patent itself for its claimed invention, which is not strong support that the prior art would have been combined or modified absent some improper hindsight. Id. at 30–35. Thus, although Petitioner may have made a sufficient showing for” slip op. at 16
§ 103 obviousnessDiscretionary denialPatents in suitUS 10,820,446
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.