- PTAB · Apr 23, 2025 · IPR2024-01465 · APJ Michelle N Wormmeester · IPR · Institution
The Board denied institution of review of claims 1–19 under § 314(a), finding that the Fintiv factors overall favored discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“As noted above, the district court has set a trial date of October 6, 2025, which is almost seven months before the final written decision in this proceeding would be due in late April 2026. Although a number of cases may be scheduled for jury selection on the same day as the District Court Litigation, nothing in the record indicates a trial in the District Court Litigation would not take place months before our deadline to reach a final decision. Because the District Court Litigation will address the issues relating to the validity of the ’750 patent in a trial scheduled to occur several months before we would issue a final written decision, we weigh the second Fintiv factor as favoring discretionary denial.” slip op. at 9
Discretionary denialPatents in suitUS 11,087,750 - PTAB · Apr 23, 2025 · IPR2024-01464 · APJ Michelle N Wormmeester · IPR · Institution
The Board denied institution of inter partes review of claims 1–18 under § 314(a), finding that the Fintiv factors overall favored discretionary denial.
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. In considering these factors, we apply the guidance set forth in a Memorandum regarding “Guidance on USPTO’s recission of ‘Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation,’” issued by the Chief Administrative Patent Judge of the Patent Trial and Appeal Board on March 24, 2025 (hereinafter, “Guidance Memo”).7” slip op. at 5
Discretionary denialPatents in suitUS 11,393,461 - Ethicon, Inc. v. Board Of Regents, The University Of Texas SystemInstitution deniedPTAB · Jun 10, 2020 · IPR2019-00406 · APJ Avelyn M Ross · IPR · Institution
The Board denied institution of IPR on all challenged claims, exercising § 314(a) discretion because the parallel district court case was advanced, overlapping, and likely to conclude first.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“waive a jury demand, a trial “will happen sooner if it is scheduled as a bench trial than it will as a jury trial.” Id. at 14:20–24. According to the Court, the parties should expect trial to occur within a year. See id. at 17:21–23 (“What I’m telling you is that you will get reached in sooner than a year, in all likelihood.”). Both parties withdrew their request for a jury demand. See Ex. 3006. Were we to institute inter partes review, a final written decision in this proceeding would issue in June 2021—leaving a year before resolution of this proceeding. Given the Western District of Texas’ emphasis that the parallel litigation should proceed as if still set for June 22, 2020, and its expectation of holding a bench trial within a year, this factor weighs strongly in favor of discretionary denial in this case.” slip op. at 10
Discretionary denialPatents in suitUS 6,596,296
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.