- PTAB · Jun 25, 2025 · IPR2024-01406 · APJ Jo-Anne M Kokoski · IPR · Remand
On remand, the Board denied institution of review of claims 1, 3, 4, 8–13, and 15 under § 314(a), finding the Fintiv factors favored discretionary denial.
RulingsRemand decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“stay or evidence exists that one may be granted if a proceeding is instituted.” Fintiv, Paper 11 at 6. A stay of litigation pending resolution of an inter partes review allays concerns about inefficiency and duplication of efforts, and strongly weighs against exercising our authority to deny institution. Fintiv, Paper 11 at 6. The Guidance Memo states that “the Board will apply the Fintiv factors when there is a parallel proceedings at the International Trade Commission.” Guidance Memo 2. Patent Owner asserts that a stay of the ITC Investigation had not been requested at the time of the Institution Decision,7 and argues that “the ITC does not stay investigations pending IPR.” PO Supp. Br. 4. Patent Owner also notes that the Institution Decision issued “just days before the ITC evidentiary hearing.” Id. Accordingly, Patent Owner argues that this factor favors denial. Id. Patent Owner is likely correct that the ITC would not have been inclined to grant a stay if one had been requested at the time the Institution Decision issued. Moreover, the ITC conducted a full evidentiary hearing less than three weeks after the Institution Decision issued, and the target date for the ITC’s final determination is four months before the statutory deadline for the Board’s final written decision. PO Supp. Br. 5. Accordingly, we” slip op. at 9
Discretionary denialPatents in suitUS 11,925,202 - Innoscience America, Inc. v. Infineon Technologies Americas Corp.Institution deniedPTAB · May 16, 2025 · IPR2025-00010 · APJ Michelle N Wormmeester · IPR · Institution
The Board denied institution of IPR challenging claims 1–14, exercising § 314(a) discretion under Fintiv because the balance of factors favored denial.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“2. Factor 2: ITC Final Determination Date Fintiv provides that an ITC trial date that is earlier than the Board’s projected statutory deadline for a final written decision may favor discretionary denial if the ITC is going to decide the same or substantially similar issues to those presented in the petition. Fintiv, Paper 11 at 8. The Guidance Memo further provides that “the Board is more likely to deny institution where the ITC’s projected final determination date is earlier than the Board’s deadline to issue a final written decision.” Guidance Memo 2. Here, the ITC has set the target date for its final determination to March 2, 2026. Ex. 2010, 3 (ITC Order Amending the Procedural Schedule). Our final written decision would be due almost three months later, in late May 2026, should we institute inter partes review.” slip op. at 8
Discretionary denialPatents in suitUS 9,070,755 - Duplo U.S.A. Corporation v. Mgi Digital Technology S.A.Institution deniedPTAB · Dec 5, 2023 · IPR2023-00936 · APJ Kimberly Mcgraw · IPR · Institution
The Board denied institution for claims 1, 2, 4, 9, 10, and 12 under § 314(a), finding the Fintiv factors favored discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“G. Balancing the Fintiv Factors A holistic balancing of the Fintiv factors weighs in favor of discretionary denial. As discussed above, only factor 4 weighs somewhat against discretionary denial. The remaining factors either do not support institution (factors 1 and 6) or weigh in favor of denial of institution (factors 2, 3, and 5). Moreover, Petitioner has not submitted a Sotera-type stipulation or shown compelling evidence of unpatentability that would make discretionary denial inappropriate under the Guidance Memo. Given the late stage of the parallel District Court Proceeding, the substantial investment by the parties in that proceeding, and the lack of strong countervailing considerations, the evidence of record favors exercising our discretion to deny institution of an inter partes review.” slip op. at 32
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Not reached
“As such, even if we were to determine that Petitioner’s Nagashima- based challenges met the lower threshold for instituting an inter partes review (a question we need not reach in our Fintiv analysis), these challenges, if unrebutted in trial, do not plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” slip op. at 25
- Skill levelSkill level petitioner adoptedDecided for petitioner
“1. Level of Ordinary Skill in the Art The level of ordinary skill is a factor to be considered when determining obviousness. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). Petitioner states that a person of ordinary skill in the art would have had a bachelor’s degree in mechanical or electrical engineering or a related field and at least two years of practical experience with printer technology. Pet. 5. Petitioner further asserts that more relevant experience may compensate for less formal education and that more relevant formal education may compensate for less practical experience. Id. (citing Ex. 1003 ¶¶ 27–28). Patent Owner does not propose its own definition but does assert that Petitioner has understated the level of ordinary skill in the art. Prelim. Resp. 9. For the purpose of this Decision, we apply Petitioner’s definition, because Patent Owner presents no countervailing definition and because we find Petitioner’s statement of the level of ordinary skill in the art adequate and supported on this record. We also note that our analysis would not change if we were to apply a higher level of skill in the art.” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“We agree with Patent Owner that Petitioner has not sufficiently shown that Nagashima discloses or suggests the claimed covering ink ordroplets of covering ink and, thus, Petitioner’s Nagashima-based grounds fail to present a compelling, meritorious, challenge. First, we disagree with Petitioner’s assertion that the ’806 patent defines covering ink as synonymous with “viscous product” so that “covering ink” broadly covers any “viscous product” including printing ink. See Pet. 8–9 (citing Ex. 1001, 3:21–22; Ex. 1003 ¶ 57–61). Rather, the ’806 patent states that “[i]n the present document, the terms of ‘covering ink’, ‘viscous product’ and ‘varnish’ are synonyms.” Ex. 1001, 3:21–22. We understand this sentence to mean that when ’806 patent uses the term “viscous product,” that the term is synonymous with “covering ink” within the ’806 patent, but is not intended to broadly mean that “covering ink” encompasses the entire universe of viscous products. We also determine that there are substantial issues with Petitioner’s argument that Nagashima discloses or suggests using covering ink in its device. Petitioner’s argument that Nagashima does not limit its device to any particular ink and identifies ink having different characteristics, including viscosity, does not plainly lead to a conclusion that Nagashima discloses use of covering ink. See Pet. 8. Nor does Petitioner’s argument that because some inkjet printers have been used to deposit covering ink, and those inkjet printers and Nagashima’s device both involve similar piezo-type ink ejection heads for ejecting different ink types and viscosities, plainly lead to a conclusion that a POSITA would have found it obvious to use Nagashima to apply a covering ink. See Pet. 9–10; Ex. 1003 ¶¶ 62–66; see” slip op. at 24
§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 8,783,806
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