- PTAB · Jun 25, 2025 · IPR2024-01280 · APJ Jo-Anne M Kokoski · IPR · Remand
On remand, the Board denied institution under § 314(a), finding the Fintiv factors favored denial despite declining to deny under § 325(d).
RulingsRemand decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for petitioner
“Other than initials on a lengthy IDS, nothing in the record indicates that the Examiner substantively considered Takeuchi, Kim, Pienemann, or among over 1,000 other references listed on the IDS, which, as noted in the Director Review Decision, “is over 40 times the size of a typical IDS.” Pet. Remand Br. 5–6; DR Dec. 7 n.3 (citing Setting and Adjusting Patent Fees During Fiscal Year 2025, 89 FR 91898 at 91924 (Nov. 20, 2024)); Ex. 1002, 228–284. Petitioner also shows that the applicant did not respond to the Examiner’s request that the applicant specifically point out “any particular reference or portion of a reference in the [IDS] which the examiner should take [sic] pay particular attention to.” Ex. 1002, 174, 295– 302.” slip op. at 13
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“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 a month after the Institution Decision issued, and the target date for the ITC’s final determination is several months before the projected statutory deadline for the Board’s final written decision. PO Remand Br. 7. Accordingly, we determine that Fintiv factor 1 weighs in favor of discretionary denial. See also Klein Tools, Inc. v. Milwaukee Electric Tool Corp., IPR2024-01400, Paper 22 at 2 (PTAB June 9, 2025) (Acting Director Stewart determining that Fintiv factor 1 weighs in favor of discretionary denial when the ITC investigation is unlikely to be stayed, the ITC already conducted a full evidentiary hearing, and the ITC final determination is expected to issue six months before the statutory deadline for the Board’s final written decision).” slip op. at 19
Discretionary denialcites PhillipsPatents in suitUS 11,925,202 - 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 - Samsung Electronics Co., Ltd. v. Sionyx, LLCInstitution deniedPTAB · Jun 6, 2025 · IPR2025-00065 · APJ Brian D Range · IPR · Institution
The Board denied institution of IPR challenging claims 1–44 under § 314(a), finding the Fintiv factors favoring denial outweighed the Petition’s strong merits.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“stipulation would only eliminate the District Court’s consideration of Haddad204. Despite the stipulation, the District Court would still have to consider invalidity of every claim the Petition addresses and would still have to consider the Alie, Baggenstoss, and Park references. Cf. Stellar at 4 (“Petitioner’s invalidity arguments in the district court are more expansive and include combinations of the prior art asserted in these proceedings with unpublished system prior art, which Petitioner’s stipulation is not likely to moot.”). In other words, “Petitioner’s stipulation does not ensure that [this proceeding] would be a ‘true alternative’ to the district court proceeding.” Id. at 3–4. Because of the remaining overlap between the Petition and the District Court proceeding, Fintiv factor four weighs strongly in favor of discretionary denial.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundOther
“for back side illumination (BSI), which appears to teach or suggest a textured region with surface features “located on the light incident side of the semiconductor layer and configured to interact with incident [EMR].” Pet. 22–27 (citing Ex. 1006, Fig. 5, ¶¶ 53, 68, 96; Ex. 1004 ¶¶ 39–40, 88–95, 101–107). As Petitioner and its expert explain, a person of ordinary skill in the art would have been motivated to modify Figure 5 of Alie into a BSI device because BSI devices allow more incident light to reach the semiconductor layer, resulting in more light being absorbed, an increase in the quantum efficiency, and an improvement in the signal to noise ratio. Pet. 25–26 (citing Ex. 1006 ¶¶ 68, 70; Ex. 1004 ¶¶ 39–40, 92, 95). Patent Owner argues that Alie does teach, suggest, or disclose “a textured region comprising a plurality of shallow trench isolation features.” Prelim. Resp. 9–11. But it appears Petitioner has at least shown Alie teaches or suggests this element. See discussion supra. Patent Owner further argues that Petitioner fails to present any proof that a person of ordinary skill in the art would have been motivated to modify Figure 5 of Alie into a BSI device. Id. at 11–15. But, in our view, Petitioner has provided an adequate motivation to modify Alie—so that more light will be absorbed, yielding an increase in the quantum efficiency and an improvement in the signal to noise” slip op. at 18
- Parallel petitionsNot reached
“17 Petitioner filed petitions for IPR2025-00064 and IPR2025-00065 at the same time. Both petitions address the ’682 patent but apply different art. Patent Owner also argues the second petition (IPR2025-00065) should be denied because one petition is sufficient. Patent Owner’s Response to Petitioner’s Notice Ranking Parallel Petitions, Paper 11. Because we deny institution based on Fintiv discretion, it is not necessary to reach Patent Owner’s multiple petition argument.” slip op. at 20
§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 10,347,682 - Samsung Electronics Co., Ltd. v. Sionyx, LLCInstitution deniedPTAB · Jun 6, 2025 · IPR2025-00064 · APJ Brian D Range · IPR · Institution
The Board denied institution of IPR challenging claims 1–44 under § 314(a), finding the Fintiv factors favoring denial outweighed the petition’s strong merits.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“arguments, and evidence presented in the parallel proceeding.” Fintiv at 12 (emphasis added). “[A] timely-filed Sotera stipulation . . . from a petitioner”—“that, if an IPR . . . is instituted, the petitioner will not pursue in district court . . . any ground raised or that could have been reasonably raised in the IPR”—“is highly relevant, but will not be dispositive by itself. Instead, the Board will consider such a stipulation as part of its holistic analysis under Fintiv.” March 2025 Fintiv Guidance 2–3. Here, Petitioner’s invalidity contentions in the district court case cover” slip op. at 14
- Parallel petitionsNot reached
“18 Petitioner filed petitions for IPR2025-00064 and IPR2025-00065 at the same time. Both petitions address the ’682 patent but apply different art. Patent Owner also argues the second petition (IPR2025-00065) should be denied because one petition is sufficient. Patent Owner’s Response to Petitioner’s Notice Ranking Parallel Petitions, Paper 11. Because we deny institution based on Fintiv discretion, it is not necessary to reach Patent Owner’s multiple petition argument.” slip op. at 22
Discretionary denialcites KSRPatents in suitUS 10,347,682 - Samsung Electronics Co., Ltd. v. Sionyx, LLCInstitution deniedPTAB · May 21, 2025 · IPR2025-00161 · APJ Monica S Ullagaddi · IPR · Institution
The Board denied institution of IPR challenging claims 1–18 under § 314(a), concluding that the Fintiv factors, viewed holistically, favored discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied fintivInstitution denied
“The standard for institution is set forth in 35 U.S.C. § 314, which provides that an inter partes review may not be instituted unless the information presented 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.” 35 U.S.C. § 314 (2019); see also 37 C.F.R § 42.4(a) (2019) (“The Board institutes the trial on behalf of the Director.”). Upon consideration of the parties’ contentions and the evidence of record, we exercise our discretion to deny institution.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“view of a parallel proceeding, 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; 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 7 Japanese Unexamined Patent Application Publication No. 2009–188316 A, published Aug. 20, 2009 (Ex. 1011). A certified translation, to which we cite, is provided (Ex. 1012, “Yamada”). 8 E. Fred Schubert, LIGHT-EMITTING DIODES, 2nd ed., 163–190, 2006 (Ex. 1013, “Schubert”). discretion, including the merits. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5–6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”). “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. 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. We consider each of these factors below.” slip op. at 4
Discretionary denialPatents in suitUS 11,721,714 - International Business Machines Corporation v. Digital Doors, Inc.Institution deniedPTAB · Jan 12, 2024 · IPR2023-00970 · APJ Thu A Dang · IPR · Institution
The Board denied institution for claims 1, 5, 25, 26, 30, and 50 because the Fintiv factors favored discretionary denial and the Petition did not present compelling merits.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“system are best served by denying or instituting review” when evaluating these factors. Fintiv, Paper 11 at 6. We have considered the circumstances and facts before us in view of Fintiv factors 1–5. As discussed above, factors 1 and 3 are neutral, factors 2 and 5 weigh in favor of discretionary denial of institution, and factor 4 weighs marginally against discretionary denial. We, therefore, conclude that the evidence of record on factors 1–5 favors exercising our discretion to deny institution of an inter partes review.” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied fintivInstitution denied
“§ 42.4(a) (2023). 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
“provided compelling evidence to support its contention that Bossemeyer, alone or in combination with Merenda, teaches “permitting full or partial reconstruction of said data with corresponding extracted data and remainder data after accessing said respective extract stores” recited in claims 1 and 29.5 5 In view of this determination, we do not need to address Patent Owner’s additional argument that Bossemeyer is not analogous art to the ’482 patent. Prelim. Resp. 16–24. Similarly, we do not need to address Patent Owner’s additional argument that a person of ordinary skill would not have found it obvious to combine Merenda with Bossemeyer. Prelim. Resp. 50–61.” slip op. at 31
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not contest Petitioner’s proposal or offer an alternative. On this record, we are persuaded that Petitioner’s proposal is consistent with the technology described in the Specification and the cited prior art. For purposes of this Decision, we adopt Petitioner’s proposed level of skill.” slip op. at 15
§ 103 obviousnessDiscretionary denialPatents in suitUS 7,552,482 - International Business Machines Corporation v. Digital Doors, Inc.Institution deniedPTAB · Jan 11, 2024 · IPR2023-00972 · APJ Elizabeth M Roesel · IPR · Institution
The Board denied institution of IPR challenging claims 31, 36, and 41, exercising § 314(a) discretion under Fintiv because the merits were not compelling.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“system are best served by denying or instituting review” when evaluating these factors. Fintiv, Paper 11 at 6. We have considered the circumstances and facts before us in view of Fintiv factors 1–5. As discussed above, factors 1 and 3 are neutral, factors 2 and 5 weigh in favor of discretionary denial of institution, and factor 4 weighs marginally against discretionary denial. We, therefore, conclude that the evidence of record on factors 1–5 favors exercising our discretion to deny institution of an inter partes review. Accordingly, following CommScope, where, as here, our analysis of the first five Fintiv factors favors denial of institution. we address the merits of the Petition to determine whether the merits are compelling.” slip op. at 11
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Resp. 34–35. We agree with Patent Owner that Merenda’s “parsing” does not disclose extracting, i.e., filtering or separating, security sensitive information from source data to obtain extracted data. Id. at 42. Instead, Merenda discloses storing data entered in empty fields pre-designated as “private” separately from data entered in fields pre-designated “public.” Ex. 1006 ¶¶ 23, 24, 26, 31, Figs. 1–3. No extracting takes place because the customer has already separated the private data from the public data in filling out the web form and entering data in separate fields that were previously designated either private or public. See Easttom Decl. ¶¶ 43–49 (discussing Merenda). We agree with Dr. Easttom’s analogy to an airport security process: Merenda works a bit like standard versus pre-check security at the airport. Before the security lines form, the official is trained to recognize that boarding passes with the green “pre-check” icon may enter the pre-check security line, and that those with boarding passes missing that icon should go to the regular security line. This step is analogous to what Merenda describes as its “parsed” step, meaning parsing in advance what kinds of information/boarding passes will qualify for different treatment. As people (like individual items of information) arrive, depending on what’s on their boarding pass, they go directly to either the pre-check security line (like the private data set) or the standard security line (like the public data set). Id. ¶ 49 (emphasis added). Petitioner presents no compelling argument that Merenda’s disclosure of storing data entered in fields pre-designated as “private” separately from data entered in fields pre-designated “public” discloses or suggests the extracting step.” slip op. at 19
- Skill levelSkill level petitioner adoptedDecided for petitioner
“had a bachelor’s degree in computer science, computer engineering, electrical engineering, or equivalent, and approximately two years of experience working in the field of data storage systems and data security as of November 13, 2000.” Pet. 6 (citing Zadok Decl. ¶¶ 114, 115). Petitioner adds that “[l]ess professional experience can be substituted by additional education, and vice versa.” Id. Patent Owner chooses not to state a position on this issue. Accordingly, for the purposes of this Decision, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art as it is consistent with the art before us.” slip op. at 13
- Expert testimonyPatent owner expert creditedDecided for patent owner
“Ex. 1006 ¶ 23 (emphasis added). It does not appear that Petitioner is relying on Merenda’s “sophisticated” notion of data parsing to teach or suggest the extracting limitation. See Pet. 31 (quoting from Merenda paragraph 23, describing only “simplistic” parsing). In any event, we agree with Patent Owner that “[t]his more sophisticated version of ‘parsing’ doesn’t remove anything, it combines data fields.” Prelim. Resp. 34; Easttom Decl. ¶ 55. Merenda’s “simplistic” version of parsing fares no better. Prelim. Resp. 34–35. We agree with Patent Owner that Merenda’s “parsing” does not disclose extracting, i.e., filtering or separating, security sensitive information from source data to obtain extracted data. Id. at 42. Instead, Merenda discloses storing data entered in empty fields pre-designated as “private” separately from data entered in fields pre-designated “public.” Ex. 1006 ¶¶ 23, 24, 26, 31, Figs. 1–3. No extracting takes place because the customer has already separated the private data from the public data in filling out the web form and entering data in separate fields that were previously designated either private or public. See Easttom Decl. ¶¶ 43–49 (discussing Merenda). We agree with Dr. Easttom’s analogy to an airport security process: Merenda works a bit like standard versus pre-check security at the airport. Before the security lines form, the official is trained to recognize that boarding passes with the green “pre-check” icon may enter the pre-check security line, and that those with boarding passes missing that icon should go to the regular security line. This step is analogous to what Merenda describes as its “parsed” step, meaning parsing in advance what kinds of information/boarding passes will qualify for different treatment. As people (like individual items of information) arrive, depending on what’s on their boarding pass, they go directly to either the pre-check security line (like the private data set) or the standard security line (like the public data set).” slip op. at 19
§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,958,268 - International Business Machines Corporation v. Digital Doors, Inc.Institution deniedPTAB · Dec 5, 2023 · IPR2023-00969 · APJ Thomas L Giannetti · IPR · Institution
The Board denied institution on claims 1, 6, 9, 10, 11, 15, 16, 21–23, and 27, finding Fintiv factors favored denial and the petition lacked 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. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5–6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”). “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. In evaluating the Fintiv factors, we take “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review,” recognizing that “there is some overlap among these factors” and that “[s]ome facts may be relevant to more than one factor.” Id. at 6.” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “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 inter partes review.” slip op. at 2
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“We do not see compelling evidence from Petitioner that the extracting/parsing data limitation is taught or suggested by Bossemeyer. As discussed supra, in Section II.C, the ’987 patent discloses extraction occurring as an initial step in which a filter removes or extracts security-sensitive data from a data object prior to storage. See Ex. 1001, 19:45–49, Fig. 1A. In contrast, Bossemeyer discloses a “partitioned” memory (see Fig. 3, reproduced supra in Section II.E.1), but does not disclose extracting, i.e., filtering or separating, security sensitive information from source data to obtain extracted data and remainder data. See Easttom Decl. ¶ 29 (“Bossemeyer is entirely silent as to where the information stored in the central server comes from, the form it takes before it gets to the central database server, or how the different pieces of information end up in the different partitioned areas of memory.”). Petitioner points to no disclosure or suggestion that the “proprietary” and “limited access” information in Bossemeyer’s database has been filtered or separated from the “public” information, so as to result in “extracted data” and “remainder data,” as recited in the challenged claims.” slip op. at 22
- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“repeatedly refers to Bossemeyer’s “partitioned” database server and attempts to equate “partitioning” with “extraction.” See, e.g., Pet. 24 (“Bossemeyer partitions or separates (e.g., extracts), user data into subsets of extracted data, e.g., limited access information and/or proprietary information, and remainder data, e.g., public information.”) (emphases and color highlighting omitted). We do not find this argument compelling. We agree with Patent Owner’s expert, Dr. Easttom, who testifies, “a partitioned memory does not Dr. Easttom explains, a partitioned memory “merely refers to memory with different areas reserved for different types of information.” Id. Petitioner argues that, to the extent Bossemeyer does not explicitly disclose “extracting data,” a person of ordinary skill would have understood that, when Bossemeyer’s central data base server “partitions” user information in terms of accessibility, Bossemeyer teaches “separating sensitive information from user data.” Pet. 27 (citing Ex. 1005, 2:17–20). We find the reference in Bossemeyer to “partitions” is not a compelling disclosure of extracting, e.g., filtering or removing, security sensitive data from a data object prior to storage. We agree, instead, with Dr. Easttom, that this disclosure in Bossemeyer is “merely referring to the act by the memory partitions of keeping different pieces of information separate from each other, not removing some pieces of data from a larger whole.” Easttom Decl. ¶ 32. He concludes that “[a person of ordinary skill] would have understood that the extracting/parsing process of the ’987 Patent is vastly different than the act of ‘partitioning’ either as used in Bossemeyer or as used in the art at the time.’” Id. ¶ 34.” slip op. at 22
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,349,987 - International Business Machines Corporation v. Digital Doors, Inc.Institution deniedPTAB · Dec 5, 2023 · IPR2023-00971 · APJ Thu A Dang · 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
“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. See Apple Inc. v. Fintiv, Inc., IPR2020 00019, Paper 11 at 6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”). “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. In evaluating the Fintiv factors, we take “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review,” recognizing that “there is some overlap among these factors” and that “[s]ome facts may be relevant to more than one factor.” Id.” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied fintivInstitution denied
“We have jurisdiction under 35 U.S.C. § 314 (2018) and 37 C.F.R. § 42.4(a) (2023). 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
- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“Furthermore, we are not persuaded that Dr. Zadok’s testimony provides compelling evidence that this limitation is met by Bossemeyer. See Ex. 1003 ¶¶ 194–211. We agree with Patent Owner that much of Dr. Zadok’s testimony is based on assumptions that he does not support with facts. Prelim. Resp. 34–41. For example, he testifies, without factual support, that “[t]he system of Bossemeyer retrieves remainder data (e.g., public information such as a customer’s name), retrieve [sic] extracted data (e.g., proprietary or limited access information such as credit card numbers and account PIN/numbers), and then logically merges these pieces of information (i.e., reconstruct the original information to appear as before it was split into different security categories).” Ex. 1003 ¶ 207 (emphases and color coding omitted). Dr. Zadok provides no citation to Bossemeyer, and we see no disclosure that Bossemeyer’s system “logically merges” public information, such as a customer’s name, with proprietary or limited access information, such as credit card numbers and account PIN/numbers. Id. Dr. Zadok even admits that “Bossemeyer does not explicitly state that the ¶ 208. Nevertheless, he speculates (without support) that “a [person of ordinary skill in the art] would have understood that such logical merging would have been obvious to take place for the (secure) transaction to succeed.” Id. Similarly, we are not persuaded by Dr. Zadok’s testimony, referring to an example from Bossemeyer involving access to medical data (Ex. 1005, 5:6–15), that “Bossemeyer discloses permitting reconstruction of some of a user’s medical data (e.g., data including the user’s medical alerts 212, and insurance and prescription information 214) and permitting reconstruction of all of user’s data (e.g., data further including the user’s medical history 216) with additional authorization.” Ex. 1003 ¶ 210 (emphases and color highlighting omitted). We find that Dr. Zadok’s testimony is speculative, hindsight-biased, and unsupported by Bossemeyer, which does not disclose or suggest any such logical merging of data. See, e.g., Plantronics, Inc. v. Aliph, Inc., 724 F.3d 1343, 1354 (Fed. Cir. 2013) (holding that an articulated reasoning “is especially important to guard against the dangers of hindsight bias”). See Ex 2004 ¶¶ 47–56 (challenging Dr. Zadok’s assumption of merging data in Bossemeyer).” slip op. at 23
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill would have “a bachelor’s degree in computer science, computer engineering, electrical engineering, or equivalent, and approximately two years of experience “[l]ess professional experience can be substituted by additional education and vice versa. Pet. 6 (citing Ex. 1003 ¶¶ 112–113). Patent Owner does not contest Petitioner’s proposal or offer an alternative. On this record, we are persuaded that Petitioner’s proposal is consistent with the technology described in the Specification and the cited prior art. For purposes of this Decision, we adopt Petitioner’s proposed level of skill.” slip op. at 14
Claim construction§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 7,721,344 - International Business Machines Corporation v. Digitaldoors, Inc.Institution deniedPTAB · Dec 1, 2023 · IPR2023-00967 · APJ Thomas L Giannetti · IPR · Institution
The Board denied institution on claim 81 because 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
“system are best served by denying or instituting review” when evaluating these factors. Fintiv, Paper 11 at 6. We have considered the circumstances and facts before us in view of Fintiv factors 1–5. As discussed above, factors 1 and 3 are neutral, factors 2 and 5 weigh in favor of discretionary denial of institution, and factor 4 weighs marginally against discretionary denial. We, therefore, conclude that the evidence of record on factors 1–5 favors exercising our discretion to deny institution of an inter partes review.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“compelling-merits question requires a higher standard of proof, ‘highly likely to prevail,’ than the statutory standard for institution, ‘reasonably likely to prevail.’” Prelim. Resp. 48. Patent Owner asserts that the Petition is deficient because Bossemeyer is not analogous art to the ’825 patent. Id. at 2, 16–23. Patent Owner contends also that Bossemeyer and Glick fail to teach the claimed “extracted data” and “reconstruction” claim elements discussed infra. Id. at 2, 23–41. Finally, Patent Owner contends that Petitioner fails to provide sufficient motivation to combine Bossemeyer and Glick. Id. at 42–47. slip op. at 19
- Expert testimonyPatent owner expert creditedPetitioner expert discountedOther
“repeatedly refers to Bossemeyer’s “partitioned” database server and attempts to equate “partitioning” with “extraction.” See, e.g., Pet. 35 (“Specifically, in Bossemeyer, user data is partitioned, e.g., extracted, into limited access information and/or proprietary information, and public information.”) (color highlighting omitted). We do not find this argument compelling. We agree with Patent Owner’s expert, Dr. Easttom, who testifies, “a partitioned memory does not imply or suggest extraction.” Easttom Decl. ¶ 29. As Dr. Easttom explains, a partitioned memory “merely refers to memory with different areas reserved for different types of information.” Id.” slip op. at 21
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“B. Claim Construction We apply the claim construction standard articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005). 37 C.F.R. § 42.100(b). Under Phillips, claim terms are afforded “their ordinary and customary meaning.” Phillips, 415 F.3d at 1312. The “ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Id. at 1313. Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those 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))). construction (Pet. 11) and Patent Owner’s choice not to state its position on claim construction. We determine we need not expressly construe any claim term at this stage of the proceeding. See Realtime Data, 912 F.3d at 1375.” slip op. at 13
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,313,825
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.