- Formycon AG v. Regeneron Pharmaceuticals, Inc.Institution deniedPTAB · Jun 2, 2025 · IPR2025-00233 · APJ Michael A Valek · IPR · Institution
The Board denied institution under § 314(a) based on the Fintiv factors and denied joinder; it did not reach the merits of the asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“B. The Fintiv Factors and Related Guidance The Board’s precedential decision in Fintiv outlines factors that balance considerations of system efficiency, fairness, and patent quality when a patent owner raises an argument for discretionary denial due to the advanced state of a parallel proceeding, such as the MDL proceeding here. Fintiv 5–6. These factors are: 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. “[I]n evaluating the factors, the Board takes a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Id. at 6.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“III. DISCRETION UNDER 35 U.S.C. § 314(A) We begin by addressing Patent Owner’s arguments for discretionary denial. As explained below, we find those arguments persuasive. Thus, we exercise discretion to deny institution of the Petition under 35 U.S.C. § 314(a) without reaching the merits of Petitioner’s asserted grounds of unpatentability.” slip op. at 8
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“35 U.S.C. § 314(a) to deny institution of the Petition and deny the Joinder Motion.” slip op. at 2
Discretionary denialPatents in suitUS 11,084,865 - Samsung Bioepis Co., Ltd. v. Regeneron Pharmaceuticals, Inc.Institution deniedPTAB · Jun 2, 2025 · IPR2025-00176 · APJ Michael A Valek · IPR · Institution
The Board denied institution of IPR on all challenged claims under § 314(a), finding the Fintiv factors—particularly investment, overlap, and merits—weighed against review.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“raised by this overlap, but given the circumstances, it does not effectively mitigate them. First, the disputed issues for Petitioner’s ODP defense are the same or substantially similar to those for the obviousness grounds in the Petition, but the Sotera stipulation does not prevent Petitioner from litigating those issues before both the district court (as part of its ODP defense) and here in the event an IPR is instituted.19 Second, the MDL proceeding 19 ODP or nonstatutory double patenting is, as the name implies, not premised on any statute. See, e.g., Ostuka Pharm. Co., Ltd. v. Sandoz, Inc., 678 F.3d 1280, 1297 (Fed. Cir. 2012) (“Nonstatutory double patenting is a judicially created doctrine grounded in public policy.”). Accordingly, it is not a ground Petitioner reasonably could have raised in this IPR. See 35 U.S.C. § 311(b) (inter partes review may be requested “only on a ground that could be raised under section 102 or 103”). includes other biosimilar applicant defendants who are similarly motivated to try to invalidate the ’865 patent claims, but who are not subject to any Sotera stipulation. Even if we institute review on Petitioner’s grounds here, those other defendants remain free to litigate the same grounds in the consolidated MDL proceeding. For these reasons and given the particular circumstances of this case, Petitioner’s Sotera stipulation does not sufficiently mitigate the risks of duplicated efforts or inconsistent decisions by making this IPR a “true alternative” to resolution of these issues by the district court. See Motorola Solutions, Inc. v. Stellar, LLC, IPR2024-01205, Paper 19, 3–4 (PTAB Mar. 28, 2005) (determining on Director Review that a Sotera stipulation did not ensure IPR would be a “true alternative” because Petitioner’s invalidity arguments “include combinations of the prior art asserted in these proceedings with unpublished system prior art, which Petitioner’s stipulation is not likely to moot” and thus the same or similar issues would remain in the parallel proceeding); SAP America, Inc. v. Cyandia, Inc., IPR2024-01496, Paper 13, 8–9 (PTAB Apr. 7, 2025) (similar).” slip op. at 19
Discretionary denialPatents in suitUS 11,084,865 - Cipla Limited v. Gilead Sciences, Inc.Institution deniedPTAB · May 15, 2025 · IPR2025-00033 · APJ Susan L C Mitchell · IPR · Institution
The Board denied institution of IPR on 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 fintivDenied
“We determine that this factor weighs heavily in favor of exercising discretion to deny the Petition. The trial date in the district court litigation is scheduled for October 6, 2025. See Prelim. Resp. 16 (citing Ex. 2010). This date is at least six months before our projected statutory deadline should we go forward in this case. Patent Owner points out that this trial date is nine months later than the median time to trial in the District of Delaware, and in Patent Owner’s view, the parties are on track to satisfy the current schedule. Id. at 16–17 (citing Ex. 2011).” slip op. at 9
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached
“1 Patent Owner also asserts that the Petition should be denied under 35 U.S.C. § 325(d), but we need not reach this issue because we are exercising discretion under Section 314(a) to deny the Petition. See Prelim. Resp. 2–3.” slip op. at 2
Discretionary denialPatents in suitUS 11,744,802 - Arthrex, Inc. v. Medshape, Inc.Institution deniedPTAB · Apr 25, 2025 · IPR2025-00053 · APJ James A Tartal · IPR · Institution
The Board denied institution of IPR challenging claims 1–10, exercising § 314(a) discretion because the Fintiv factors, considered holistically, favored denial.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied
“review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2023). An 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.” 35 U.S.C. § 314(a). However, institution of inter partes review is discretionary. Upon consideration of the Petition, the Preliminary Response, the Preliminary Reply, the Preliminary Sur-reply, and the evidence of record, we exercise our discretion to deny institution of inter partes review under 35 U.S.C. § 314(a) in view of the co-pending district court litigation.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“7. Balancing the Fintiv Factors As discussed above, factors 1 and 3–5 each favor denial. Factor 2 is the only factor that favors institution because there is no trial date in the Parallel Proceeding and the evidence presented of a median time-to-trial for civil trials in that district suggests a potential trial date after the statutory deadline for a final written decision in this proceeding. However, Patent Owner also shows that discovery and any dispositive motions will be completed in the Parallel Proceeding well before the statutory deadline for a final written decision in this proceeding, which presents a risk of duplicated efforts given the unmitigated overlap in issues between proceedings. On balance, considerations concerning an uncertain trial date in the Parallel Proceeding under Factor 2 do not outweigh the more substantial reasons identified under the other Fintiv Factors. Thus, considering all of the factors holistically, we find on balance that the factors on this unique record weigh in favor of discretionary denial of the Petition. Accordingly, we exercise discretion to deny institution under 35 U.S.C. § 314(a).” slip op. at 15
Discretionary denialPatents in suitUS 7,985,222 - ROKU, Inc. v. Ioengine, LLCInstitution deniedPTAB · May 5, 2023 · IPR2022-01554 · APJ Christopher L Ogden · IPR · Institution
The Board denied institution on claims 17–21, 25–35, 59–69, 85–89, and 93–99 under § 314(a), finding the Fintiv factors favored denial and no compelling merits challenge.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“The Fintiv Memo directs that “compelling, meritorious challenges will be allowed to proceed at the PTAB even where district court litigation is proceeding in parallel.” Ex. 2011, 4. The Director defines “[c]ompelling, meritorious challenges [as] those in which the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Id. We consider whether there are compelling merits when, as here, our analysis of the first five Fintiv factors favors denial of institution. See CommScope Techs. LLC v. Dali Wireless, Inc., IPR2022-01242, Paper 23 at 5 (PTAB Feb. 27, 2023) (precedential). For the reasons below, we determine that the Petition and the preliminary evidence do not present a compelling, meritorious challenge.7” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“In particular, the preliminary record does not plainly show that Alger or the other references teach or disclose a portable device and a separate terminal with processing capabilities sufficient to facilitate a key exchange between the terminal and the portable device as recited in the claims. See, e.g., Ex. 1301, 32:48–53, 33:26–30.” slip op. at 16
§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 10,972,584 - ROKU, Inc. v. Ioengine, LLCInstitution deniedPTAB · May 5, 2023 · IPR2022-01553 · APJ Christopher L Ogden · IPR · Institution
The Board denied institution of IPR challenging claims 1–16, 22–24, 36–53, 58, 70–84, and 90–92, exercising § 314(a) discretion under Fintiv.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“A holistic balancing of the Fintiv factors weighs in favor of discretionary denial. As discussed above, only factor 4 weighs against discretionary denial, and factors 2 and 3 weigh heavily in favor. Moreover, Roku has not submitted a Sotera-type stipulation that would make discretionary denial inappropriate under the Fintiv Memo, and likewise, the Petition does not show compelling evidence of unpatentability under factor 6. 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 17
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied fintivInstitution denied
“IV. CONCLUSION For the above reasons, we exercise our discretion under 35 U.S.C. § 314(a) to deny institution of an inter partes review challenging claims 1– 16, 22–24, 36–53, 58, 70–84, and 90–92 of the ’584 patent. V. ORDER In consideration of the foregoing, it is ORDERED that the Petition is denied, and no trial is instituted.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“In particular, the preliminary record does not plainly show that Alger or the other references teach or disclose a portable device and a separate terminal with processing capabilities sufficient to facilitate a key exchange between the terminal and the portable device as recited in the claims. See, e.g., Ex. 1201, 32:48–53, 33:26–30. In the Petition, Roku contends that “Alger’s PDA 120 is a ‘portable device,’” and that “Alger’s ‘monitor 147,’ which includes a screen/display, . . . , is the ‘terminal comprising . . . an output component’ in Claim 1.” Pet. 28–30 (citing Ex. 1203 ¶¶ 153–154, 158). Roku relies on Lyle for teaching the use of HDCP, which involves the exchange of a key between a transmitter and a receiver. See Pet. 71–72. In response, IOENGINE argues that “[t]he only alleged ‘terminal’ that [Roku] identifies in either reference is Alger’s monitor 147,” but according to IOENGINE, Alger’s monitor 147 “is merely an ‘output component’ with no processor or memory as required by every Challenged Claim.” Prelim. Resp. 26–27. IOENGINE argues that at the time of Alger’s disclosure, monitors such as monitor 147 did not have general-purpose computing capabilities that could facilitate a key exchange. Id. at 27 (Ex. 2001 ¶ 88).” slip op. at 15
§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 10,972,584 - ROKU, Inc.Institution deniedPTAB · May 5, 2023 · IPR2022-01552 · APJ Christopher L Ogden · IPR · Institution
The Board denied institution of IPR challenging claims 17–21, 25–35, 59–69, 85–89, and 93–99 because the Fintiv factors favored discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Wireless, Inc., the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Ex. 2011, 3 (footnote omitted) (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential)). Roku’s stipulation, however, falls far short of a Sotera-type stipulation that would bar Roku from pursuing any grounds in the parallel district court proceeding that could have reasonably been raised before the Board. Thus, while Roku’s stipulation would prevent some overlap between this proceeding and the parallel district court proceeding, the scope of the stipulation does not rise to the level contemplated in the Fintiv Memo. Thus, although we find that the fourth Fintiv factor weighs somewhat against discretionary denial of institution, this does not end our analysis because Roku has declined to submit a Sotera-type stipulation.” slip op. at 14
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied fintivInstitution denied
“§ 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) (2018); see also 37 C.F.R. § 42.108(c) (2022). 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
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“In particular, we find it a close issue whether Ozawa discloses a “portable device” as recited in unchallenged independent claims 1, 39, and 73, which is also part of the challenged dependent claims. In claims 1 and 39, the term “portable device” is introduced in the preamble and appears throughout the claims. See Ex. 1101, 32:46–33:30, 36:32–37:11. In claim 73, a “portable device” is recited as an element of the claimed system. See id. at 39:44–40:20. In its Petition, Roku assumes, for its arguments, that the claim preambles, including the term “portable,” are limiting. See Pet. 24, 27–28. In its Preliminary Response, IOENGINE argues that “[t]he term ‘portable device’ is limiting because it provides antecedent basis for 11 instances in the body of claim 1,” and because the specification specifically focused on portability as an important feature of the invention. Prelim. Resp. 11–13. We agree with IOENGINE that the claim preambles are limiting at least to the extent that “portable” is a necessary feature of the portable device recited in the claims. We also point out that in the parallel district court litigation, the court specifically held that the preambles of claims 1, 39, and 73 are limiting. See Ex. 2008, 29–31. We agree with the district court’s analysis.” slip op. at 16
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“In light of IOENGINE’s preliminary arguments, we find the issue of whether Ozawa discloses a “portable device” to be a close issue. The 9 IOENGINE erroneously identifies the Preliminary Infringement Contentions as Exhibit 1116 rather than Exhibit 1118. evidence does not plainly support Roku’s position at this stage, and the question would need to be further developed at trial. Because the “portable device” limitation is part of all challenged claims, Roku would need to prevail on this issue to prevail on any claim at trial. Thus, we determine that Roku has not, at this stage, presented a “compelling, meritorious challenge[]” to any claim of the ’584 patent. Ex. 2011, 4. Accordingly, we find that the sixth Fintiv factor does not weigh against discretionary denial.” slip op. at 17
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 10,972,584 - ROKU, Inc. v. Ioengine, LLCInstitution deniedPTAB · May 5, 2023 · IPR2022-01551 · APJ Christopher L Ogden · IPR · Institution
The Board denied institution on all challenged claims under Fintiv, citing the advanced parallel district court case and finding no compelling merits challenge.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“We agree with IOENGINE that trial in the parallel district court proceeding is likely to be about six months prior to the due date for our final written decision if we were to institute an inter partes review. Because the district court would address issues relating to the validity of the ’584 patent well before we would issue a final written decision, we find that the second Fintiv factor weighs heavily in favor of discretionary denial of institution.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“We agree with IOENGINE that the claim preambles are limiting at least to the extent that “portable” is a necessary feature of the portable device recited in the claims. We also point out that in the parallel district 5 Our compelling-merits analysis relies on the parties’ agreed understanding of the level of ordinary skill in the pertinent art, which Roku articulates in its Petition. Pet. 15 (citing Ex. 1003 ¶ 60); Prelim. Resp. 8–9; see also Phillips v. AWH Corp., 415 F.3d 1303, 1312–1313 (Fed. Cir. 2005) (en banc) (the level of ordinary skill is pertinent to claim construction); Graham v. John Deere Co. of Kan. City, 383 U.S. 1, 17–18 (1966) (the level of ordinary skill is one of the factors to consider when determining obviousness). court litigation, the court specifically held that the preambles of claims 1, 39, and 73 are limiting. See Ex. 2008, 29–31. We agree with the district court’s analysis.” slip op. at 15
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In light of IOENGINE’s preliminary arguments, we find the issue of whether Ozawa discloses a “portable device” to be a close issue. The evidence does not plainly support Roku’s position at this stage, and the question would need to be further developed at trial. Because the “portable device” limitation is part of all challenged claims, Roku would need to prevail on this issue to prevail on any claim at trial. Thus, we determine that Roku has not, at this stage, presented a “compelling, meritorious challenge[]” to any claim of the ’584 patent. Ex. 2011, 4. Accordingly, we find that the sixth Fintiv factor does not weigh against discretionary denial.” slip op. at 17
Claim constructionDiscretionary denialcites Phillips · GrahamPatents in suitUS 10,972,584 - Google LLC v. Ecofactor, Inc.Institution deniedPTAB · Mar 18, 2022 · IPR2021-01578 · APJ Scott B Howard · IPR · Institution
The Board denied institution of inter partes review of claims 1–15 based on its holistic Fintiv analysis of the parallel ITC investigation.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“requested a stay of the ITC investigation, and we agree with Patent Owner that a stay of the ITC investigation is unlikely given that post-trial briefing is completed. Accordingly, this factor weighs in favor of not instituting this proceeding.” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied
“review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2021). 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 the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Section 314(a) does not require the Director to institute an inter partes review. 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.”). Rather, a decision whether to institute is within the Director’s discretion, and that discretion has been delegated to the Board. See 37 C.F.R. § 42.4(a); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016) (“[T]he agency’s decision to deny a petition is a matter committed to the Patent Office’s discretion.”).” slip op. at 2
Discretionary denialPatents in suitUS 8,886,488 - Google LLC v. Ecofactor Inc.Institution deniedPTAB · Nov 9, 2021 · IPR2021-00982 · APJ Jeffrey W Abraham · IPR · Institution
The Board denied institution of IPR challenging claims 1–7 and 10–30, exercising § 314(a) discretion under Fintiv based on the parallel ITC investigation.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“involving the ’983 patent, Patent Owner correctly notes that Fintiv expressly addresses ITC investigations, and the Board has considered ITC investigations in weighing whether or not to exercise its discretion under 35 U.S.C. § 314. Fintiv, Paper 11 at 8 (“[E]ven though the Office and the district court would not be bound by the ITC’s decision, an earlier ITC trial date may favor exercising authority to deny institution under NHK if the ITC is going to decide the same or substantially similar issues to those presented in the petition.”); Garmin Int’l, Inc. v. Koninklijke Philips N.V, IPR2020- 00754, Paper 11 (PTAB Oct. 27, 2020); Comcast Cable Commc’ns, LLC v. Rovi Guides, Inc., IPR2020-00800, Paper 10 (PTAB Oct. 22, 2020). In view of this, we consider the facts surrounding the ITC investigation for purposes of analyzing the Fintiv factors in this case. Specifically with regard to Factor 1, there is no evidence here that Petitioner has requested a stay of the ITC investigation, and we agree with Patent Owner that a stay of the ITC investigation is unlikely given the advanced stage of the investigation, including the fact that the hearing in the ITC investigation is scheduled to begin on December 13, 2021. Accordingly, we determine that this factor weighs against instituting this proceeding.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied fintivInstitution denied
“the Fintiv factors. Because our analysis is fact driven, no single factor is determinative of whether we exercise our discretion to deny institution under § 314(a). Further, 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. Having evaluated all of the factors based on the arguments and evidence of record, in the exercise of the Director’s discretion under 35 U.S.C. § 314(a), inter partes review is not instituted. III. ORDER In consideration of the foregoing, it is hereby ORDERED that the Petition is denied, and no trial is instituted.” slip op. at 14
Discretionary denialPatents in suitUS 10,612,983
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.