- Phison Electronics Corporation v. Vervain, LLCInstitution deniedPTAB · May 28, 2025 · IPR2025-00212 · APJ Jon M Jurgovan · IPR · Institution
Institution of inter partes review of claims 1–11 was denied under § 314(a) because the Fintiv factors, viewed holistically, favored discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“7. Weighing 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 the Fintiv factors. Fintiv at 6. The trial date (December 2025) for the parallel proceeding is considerably earlier than the projected statutory deadline (June 2026) for issuing a final written decision in this proceeding. Accordingly, Fintiv factor 2 weighs for discretionary denial. Under Fintiv factor 4, there is significant overlap between the invalidity challenges asserted in the two proceedings. Petitioner has proffered no stipulation to ameliorate concerns of duplicative efforts and conflicting decisions. Accordingly, this factor weighs for discretionary denial. Petitioner and the defendant in the parallel proceeding are the same, so Fintiv factor 5 weighs for discretionary denial.” slip op. at 15
Discretionary denialPatents in suitUS 8,891,298 - Solus Advanced Materials Co, Ltd. v. SK Nexilis Co., Ltd.Institution deniedPTAB · Apr 22, 2025 · IPR2024-01460 · APJ Jon B Tornquist · IPR · Institution
The Board denied institution of review of claims 1–11 because the Fintiv factors, including the early trial date and close merits case, favored discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied fintivInstitution 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 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.” Institution of inter partes review, however, 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. A. Real Parties-in-Interest” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“Board’s projected statutory deadline to issue a final written decision. Fintiv, Paper 11 at 9. “If the court’s trial date is at or around the same time as the projected statutory deadline . . . the decision whether to institute will likely implicate other factors.” Id. Conversely, “[i]f the court’s trial date is earlier than the projected statutory deadline,” this has generally weighed “in favor of exercising authority to deny institution.” Id.” slip op. at 15
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached
“Petition under 35 U.S.C. § 325(d) because the same or substantially the same art and arguments were before the Examiner during prosecution and Petitioner’s has not demonstrated that the Examiner erred in a material manner when allowing the claims. Pet. 17–18. Given our discretionary denial of the Petition in view of the Fintiv factors, we do not address Petitioner’s further arguments with respect to § 325(d).” slip op. at 32
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner applies Petitioner’s recited level of ordinary skill in the art for purposes of its Preliminary Response. Prelim. Resp. 4. Upon review of the parties’ arguments and the prior art of record, we adopt Petitioner’s unopposed definition of the ordinarily skilled artisan for purposes of this decision as it appears consistent with the disclosures of the ’090 patent and the prior art of record. C. Claim Construction” slip op. at 9
§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,480,090 - PTAB · Sep 30, 2021 · IPR2021-00659 · APJ Jon M Jurgovan · IPR · Institution
The Board denied institution of IPR on all challenged claims under § 314(a), finding the ITC investigation’s timing and substantial investment outweighed factors favoring institution.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“and the target date for completion of the ITC investigation is February 22, 2022. Ex. 2001, 4. Accordingly, it is likely that this proceeding will be concluded prior to trial in the District Court, but after the ITC investigation is completed. Because the ITC is scheduled to complete its investigation approximately seven-and-a-half months before the due date for the final written decision, this factor weighs in favor of exercising our discretion to deny institution.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied fintivInstitution denied
“the Petition on the merits in its Preliminary Response and we do not have the benefit of Patent Owner’s views on the merits. However, we agree with Petitioner that the Petition appears to present a reasonable likelihood that Petitioner would prevail. Considering the evidence, we determine that this factor is neutral.” slip op. at 15
Discretionary denialPatents in suitUS 10,651,333 - PTAB · May 26, 2021 · IPR2021-00095 · APJ Terrence W Mcmillin · IPR · Institution
The Board denied institution of IPR on all challenged claims under § 314(a), finding that Fintiv factors concerning the ITC investigation outweighed the factors favoring institution.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“be stayed. Although Petitioner provides examples of stayed proceedings, we are not persuaded that those examples impact this proceeding. On the other hand, the parties agree that the ITC will not stay its investigation. See Reply 2; Sur-reply 2–3. Accordingly, we weigh this factor in favor of exercising our discretion to deny institution.” slip op. at 9
Discretionary denialPatents in suitUS 10,522,707 - U.S. Venture, Inc. v. Sunoco Partners Marketing & Terminals L.P.Rehearing deniedPTAB · Dec 17, 2020 · IPR2020-00728 · APJ Brent M Dougal · IPR · Rehearing
The Board denied rehearing, leaving in place its denial of institution for claims 16–17 based on the Fintiv factors and its § 314(a) discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“When rehearing a decision on institution, the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if the decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). The burdens and requirements of a request for rehearing are stated in 37 C.F.R. § 42.71(d): The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. Thus, a request for rehearing is not an opportunity to present new arguments or evidence or merely to disagree with the panel’s assessment of the arguments or weighing of the evidence.” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for patent owner
“the evidence laid out an approximate time frame for when the trial would likely be held. Dec. 9 (citing Ex. 2003); see also id. at 8–9 (citing PO Resp. 35; Ex. 1026) (Discussing the Court’s Procedures and timeline for trial after the docket call). Thus, we determined that this factor favored denying institution under our analysis of the factors under Fintiv. Id. at 9.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Petitioner acknowledges that the proposed combination of the references relies on “us[ing] the cumulative totals of the flow rates of the unblended components in the Hoffman compensation process” (id.), however Patent Owner identifies that Hoffman appears to teach away from using the flow rates of the unblended components in its calculations because of the uncertainty in the flow rate of the blended line. Prelim. Resp. 19, 21– 22. Contrary to Petitioner’s position, it is not Patent Owner’s burden to show why “a person of ordinary skill in the art would be discouraged from measuring flow rates upstream for use in the Hoffman compensation process” (Reh. Req. 9), but rather, Petitioner bears the burden to show why a person of ordinary skill in the art would measure flow rates upstream for use in the Hoffman compensation process in view of the all of the teachings of the references (35 U.S.C. § 314(a) (Institution only authorized if “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.”)). Petitioner’s arguments do not show that we misapprehended or” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageNot reached
“argument concerning the construction of the term “in-line blending.” Id. at 13.” slip op. at 6
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 9,207,686 - Google LLC v. Personalized Media Communications, LLCRehearing deniedPTAB · Nov 5, 2020 · IPR2020-00722 · APJ John F Horvath · IPR · Rehearing
The Board denied Google’s request for rehearing and left in place its denial of institution, finding no abuse of discretion in its Fintiv analysis.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Standard for Reconsideration When rehearing a decision on petition, the Board will review the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). “An abuse of discretion occurs if the decision: (1) is clearly unreasonable, arbitrary, or fanciful; (2) is based on an erroneous conclusion of law; (3) rests on clearly erroneous fact findings; or (4) involves a record that contains no evidence on which the Board could rationally base its decision.” Redline Detection, LLC v. Star Envirotech, Inc., 811 F.3d 435, 442 (Fed. Cir. 2015) (internal citations omitted). A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” 37 C.F.R. § 42.71(d). The burden of showing a decision should be modified on a request for rehearing lies with the party challenging the decision. Id.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDecided for patent owner
“Our Decision performed such an analysis, finding factor 3 favored denying institution because “the District Court and the parties have invested significant resources in the district court case on issues of claim construction and validity, including by completing expert discovery on July 8, 2020.” Dec. 8. The issuance of the 94-page claim construction order and the completion of expert discovery on validity, all done in preparation for a trial scheduled to commence less than two months after our Decision was due, is evidence that “the parallel proceeding is more advanced, a stay may be less likely, and instituting would lead to duplicative costs,” all of which are factors that “favor[] denial” because “the court and parties have invested sufficient time in the parallel proceeding to favor denial.” Fintiv, Paper 11 at 9–10.” slip op. at 7
Discretionary denialPatents in suitUS 7,747,217 - Google LLC v. Personalized Media Communications, LLCRehearing deniedPTAB · Nov 5, 2020 · IPR2020-00723 · APJ John F Horvath · IPR · Rehearing
The Board denied Google’s rehearing request and maintained its denial of institution, finding the Fintiv factors favored discretionary denial under § 314(a).
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Standard for Reconsideration When rehearing a decision on petition, the Board will review the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). “An abuse of discretion occurs if the decision: (1) is clearly unreasonable, arbitrary, or fanciful; (2) is based on an erroneous conclusion of law; (3) rests on clearly erroneous fact findings; or (4) involves a record that contains no evidence on which the Board could rationally base its decision.” Redline Detection, LLC v. Star Envirotech, Inc., 811 F.3d 435, 442 (Fed. Cir. 2015) (internal citations omitted). A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” 37 C.F.R. § 42.71(d). The burden of showing a decision should be modified on a request for rehearing lies with the party challenging the decision. Id.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“D. Balancing the Fintiv Factors for Abuse of Discretion We have considered carefully the arguments and evidence before us in view of the Fintiv factors Petitioner relies upon to argue we erred in our Decision. As we discussed previously, our analysis is fact driven, and no single factor is determinative of whether we exercise our discretion to deny institution under § 314(a). Fintiv factor 6 does not weigh in favor of institution because the strength of the merits are not clear and it would be inefficient to expend the resources needed to provide clarity given the significant resources already spent by the parties and the District Court. In any case, we considered a balanced assessment of all factors as required by Fintiv, including the investment in claim construction and discovery (factor 3), the pending trial date1 (factor 1), and the fact that there is no difference between the parties (factor 5), and concluded that the balance of the Fintiv factors weighed in favor of exercising our discretion to deny institution. Petitioner’s arguments show no misapprehension of our analysis or weighing of the Fintiv factors. Although Petitioner would have us weigh the factors differently, disagreement with how the Board weighed the factors is not a proper basis for requesting rehearing nor is it evidence that our Decision mistook Fintiv or overlooked or misapprehended any Fintiv factors.” slip op. at 8
Discretionary denialPatents in suitUS 7,747,217 - Google LLC v. Personalized Media Communications, LLCRehearing deniedPTAB · Nov 5, 2020 · IPR2020-00719 · APJ Georgianna W Braden · IPR · Rehearing
The Board denied Google’s rehearing request and left in place its denial of institution, finding no abuse of discretion in its Fintiv analysis.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“B. Standard for Reconsideration When rehearing a decision on petition, the Board will review the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be determined if a decision: (1) is clearly unreasonable, arbitrary, or fanciful; (2) is based on an erroneous conclusion of law; (3) rests on clearly erroneous fact findings; or (4) involves a record that contains no evidence on which the Board could rationally base its decision. Redline Detection, LLC v. Star Envirotech, Inc., 811 F.3d 435, 442 (Fed. Cir. 2015). The party challenging the decision has the burden of showing the decision should be modified, and the request for rehearing must specifically identify all matters the party believes the Board misapprehended or overlooked and the place where each matter was previously addressed in its papers. 37 C.F.R. § 42.71(d).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“factor 6 and disagree that we misapprehended or overlooked this Fintiv factor. In the Decision to Deny Institution, we did not consider the merits because we determined after a brief consideration of the prosecution history that “significant resources . . . will be required to resolve issues of claim construction to reach preliminary conclusions on the merits of the Petition.” Dec. 16. Although Fintiv provides that review includes a balanced assessment of all the factors, including the merits, here, even if we assumed that factor 6 weighed toward institution, we would still deny institution because of the significant weight of the other Apple v. Fintiv factors against institution in this case. As explained in our Decision to Deny Institution, the goal of the Fintiv balanced assessment is to determine “whether efficiency and integrity of the system are best served by denying or instituting review.” Dec. 15 (quoting Fintiv, Paper 11 at 6). In other words, the review of the prosecution history revealed that the merits of the Petition were not so sufficiently clear that we could reach a preliminary conclusion that the merits outweighed the other Fintiv factors we considered, such as the resources already expended by the parties and the timing of the district court hearing.” slip op. at 6
Discretionary denialcites PhillipsPatents in suitUS 8,739,241 - Google LLC v. Personalized Media Communications, LLCRehearing deniedPTAB · Nov 5, 2020 · IPR2020-00720 · APJ Jon M Jurgovan · IPR · Rehearing
The Board denied Google’s rehearing request and left in place its § 314(a) denial of review based on the balance of the Fintiv factors.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“B. Standard of Review When rehearing a decision on a petition, the Board will review the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be determined if a decision: (1) is clearly unreasonable, arbitrary, or fanciful; (2) is based on an erroneous conclusion of law; (3) rests on clearly erroneous fact findings; or (4) involves a record that contains no evidence on which the Board could rationally base its decision. Redline Detection, LLC v. Star Envirotech, Inc., 811 F.3d 435, 442 (Fed. Cir. 2015) (internal citations omitted). The party challenging the decision has the burden of showing a decision should be modified, and the request for rehearing must specifically identify all matters the party believes the Board misapprehended or overlooked and the place where each matter was previously addressed in its papers. 37 C.F.R. § 42.71(d).” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDecided for patent owner
“(Nov. 2019)1 (“TPG”). When a patent owner raises an argument for discretionary denial due to the advanced state of a parallel proceeding, the Board has set forth several factors that it will consider to balance considerations of system efficiency, fairness, and patent quality. See Fintiv, Paper 11 at 5–6. These factors include: 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. Id. at 6. [“I]n evaluating these factors, the Board takes a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Id.” slip op. at 4
Discretionary denialPatents in suitUS 8,601,528 - Google LLC v. Personalized Media Communications, LLCRehearing deniedPTAB · Nov 5, 2020 · IPR2020-00724 · APJ Jon M Jurgovan · IPR · Rehearing
The Board denied Google’s rehearing request and maintained its discretionary denial of IPR for claims 1 and 2 based on the Fintiv factors.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be determined if a decision: (1) is clearly unreasonable, arbitrary, or fanciful; (2) is based on an erroneous conclusion of law; (3) rests on clearly erroneous fact findings; or (4) involves a record that contains no evidence on which the Board could rationally base its decision. Redline Detection, LLC v. Star Envirotech, Inc., 811 F.3d 435, 442 (Fed. Cir. 2015) (internal citations omitted). The party challenging the decision has the burden of showing a decision should be modified, and the request for rehearing must specifically identify all matters the party believes the Board misapprehended or overlooked and the place where each matter was previously addressed in its papers. 37 C.F.R. § 42.71(d).” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“Fintiv expressly provides that “district court claim construction orders may indicate that the court and parties have invested sufficient time in the parallel proceeding to favor denial.” Fintiv, Paper 11, 10. In other words, Fintiv holds that a district court’s investment in issuing a claim construction order weighs toward, not against, exercising discretion to deny institution. This is particularly true here, where, as noted in our Decision, the district court issued a 94-page claim construction order. Dec. 7.” slip op. at 6
Discretionary denialPatents in suitUS 7,769,344
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.