- Samsung Electronics Co., Ltd. v. Telcom Ventures LLCInstitution deniedPTAB · Oct 10, 2025 · IPR2025-00973 · APJ Kalyan K Deshpande · IPR · Director review
The Director granted Patent Owner’s discretionary-denial request and denied the petitions under § 314(a), instituting no trial because the district court case was likely to reach trial first.
RulingsDirector review decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“In particular, the projected final written decision due date in the Board proceeding is December 10, 2026.3 DD Req. 13. The district court’s scheduled trial date is June 1, 2026, and the time-to-trial statistics suggest trial will begin by October 2026. Id.; DD. Opp. 17. As such, it is unlikely that a final written decision in this proceeding will issue before district court trial occurs resulting in significant duplication of effort, additional expense for the parties, and a risk of inconsistent decisions. Additionally, there is insufficient evidence that the district court is likely to stay its proceeding even if the Board were to institute trial. Further, Petitioner’s argument that the patent examiner committed “multiple errors” during prosecution are not persuasive. See DD Opp. 7–12.” slip op. at 2
- Director reviewOther
“After considering the parties’ arguments and the record, and in view of all relevant considerations, discretionary denial of institution is appropriate in these proceedings. This determination is based on the totality of the evidence and arguments the parties have presented.” slip op. at 2
Discretionary denialPatents in suitUS 9,462,411 - Taiwan Semiconductor Manufacturing Company Ltd. / Apple Inc. v. Marlin Semiconductor Ltd.Institution deniedPTAB · Sep 3, 2025 · IPR2025-00848 · APJ Coke Morgan Stewart · IPR · Director review
The Director denied institution in IPR2025-00848, IPR2025-00864, IPR2025-00865, and IPR2025-00879 under § 314(a), citing ITC overlap and settled expectations.
RulingsDirector review decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“In particular, the projected final written decision due date for each of these cases is November 15, 2026. The hearing in the parallel U.S. International Trade Commission (“ITC”) investigation is set for February 2, 2026. DD Req. 14. As such, it is unlikely that a final written decision in these proceedings will issue before the ITC trial occurs, resulting in significant duplication of effort, additional expense for the parties, and a risk of inconsistent decisions. In addition, the patents challenged in IPR2025- 00848, IPR2025-00864, IPR2025-00865, and IPR2025-00879 have been in force for seven, nine, nine, and ten years, respectively, creating strong settled expectations for Patent Owner, and Petitioner does not provide persuasive reasoning why an inter partes review is an appropriate use of Board resources. Dabico Airport Sols. Inc. v. AXA Power ApS, IPR2025- 1 Citations are to papers in IPR2025-00847. The parties filed similar papers in IPR2025-00848, IPR2025-00864, IPR2025-00865, and IPR2025-00879. 00408, Paper 21 at 2–3 (Director June 18, 2025). These factors favor discretionary denial.” slip op. at 2
- Settled expectationsInstitution denied settled expectationsDenied
“these cases is November 15, 2026. The hearing in the parallel U.S. International Trade Commission (“ITC”) investigation is set for February 2, 2026. DD Req. 14. As such, it is unlikely that a final written decision in these proceedings will issue before the ITC trial occurs, resulting in significant duplication of effort, additional expense for the parties, and a risk of inconsistent decisions. In addition, the patents challenged in IPR2025- 00848, IPR2025-00864, IPR2025-00865, and IPR2025-00879 have been in force for seven, nine, nine, and ten years, respectively, creating strong settled expectations for Patent Owner, and Petitioner does not provide persuasive reasoning why an inter partes review is an appropriate use of Board resources. Dabico Airport Sols. Inc. v. AXA Power ApS, IPR2025- 1 Citations are to papers in IPR2025-00847. The parties filed similar papers in IPR2025-00848, IPR2025-00864, IPR2025-00865, and IPR2025-00879. 00408, Paper 21 at 2–3 (Director June 18, 2025). These factors favor discretionary denial.” slip op. at 2
- Other 314aInstitution denied discretionary otherDenied
“Petitioner argues that national security, economic, and public interest considerations counsel against discretionary denial because “[t]he semiconductor chips manufactured by TSMC are vital to leading U.S. companies (from Apple and NVIDIA to Amazon and Tesla) . . . and national security and defense through TSMC’s CyberShuttle program.” DD Opp. 31. Petitioner, however, does not explain in sufficient detail why review of the challenged patents is in the interest of national security, the economy, or the public. That is, Petitioner’s arguments are not narrowly-tailored towards particular products or manufacturing methods, and Petitioner does not sufficiently explain how national security, economic, or public interests warrant review of the specific patents challenged in these proceedings.” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“circumstances. In particular, Petitioner provides persuasive reasoning, supported by evidence, that the Office erred in a manner material to the patentability of the challenged patent during patent examination, and, accordingly, discretionary denial under 35 U.S.C. § 325(d) is not appropriate. Specifically, during prosecution of the challenged patent, the patent examiner applied Chien7702 to reject the claims, but subsequently allowed the claims after the applicant amended them. DD Opp. 5–6. Petitioner persuasively demonstrates that the patent examiner overlooked 2 US Pat. 6,815,770, Nov. 9, 2004 (Ex. 1037). certain teachings in Chien770 that appear to disclose the claimed features that the patent examiner indicated were not taught by the prior art of record, including Chien770. Id. at 7–10. Although the challenged patent has been in force for fifteen years, Petitioner appears to show a material error by the Office, and it is an appropriate use of Office resources to review the potential error.” slip op. at 3
Discretionary denialPatents in suitUS 9,953,880 - Rec Solar Holdings As v. Maxeon Solar Pte. Ltd.Institution deniedPTAB · Aug 14, 2025 · IPR2025-00592 · APJ Coke Morgan Stewart · IPR · Director review
The Director granted Patent Owner’s discretionary-denial request and denied the petitions under § 314(a); no trial was instituted.
RulingsDirector review decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“First, the projected final written decision due date for each of these proceedings is October 17, 2026. DD Req. 6. The district court’s scheduled trial date is June 1, 2026, and the time-to-trial statistics suggest trial will begin in June 2026. Id. at 6–7. As such, it is unlikely that a final written decision in these proceedings will issue before the district court trial occurs, resulting in significant duplication of effort, additional expense for the 1 Citations are to papers in IPR2025-00592. Patent Owner filed similar papers in IPR2025-00593, IPR2025-00594, and IPR2025-00595. 2 In IPR2025-00593, Petitioner filed a motion for joinder to IPR2024-01040. In IPR2025-00594, Petitioner filed a motion for joinder to IPR2024-01038. In IPR2025-00595, Petitioner filed a motion for joinder to IPR2024-01194. parties, and a risk of inconsistent decisions. This weighs strongly in favor of discretionary denial.” slip op. at 2
- Other 314aInstitution denied discretionary otherDenied
“01039, the proceeding that Petitioner seeks to join, is January 14, 2026. As such, it is likely that a final written decision will issue before the district court trial occurs. This is true for all of the proceedings Petitioner seeks to join, and generally counsels against discretionary denial. However, given that the present proceedings would not be instituted in the absence of the proceedings Petitioner seeks to join, there are little to no efficiencies to be gained by joining Petitioner to the proceedings already in progress. Although certain arguments are highlighted above, the determination to exercise discretion to deny institution is based on a holistic assessment of all of the evidence and arguments presented. Accordingly, the Petitions are denied under 35 U.S.C. § 314(a).” slip op. at 3
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingNot reached
“Petitioner filed the Petition and an accompanying motion for joinder to IPR2024-01039, a proceeding that the Board instituted on January 14, 2025. Canadian Solar Inc. v. Maxeon Solar Pte. Ltd., IPR2024-01039, Paper 13 (PTAB Jan. 14, 2025).2 The Board first determines whether to institute a proceeding before considering a motion for joinder. 35 U.S.C. § 315(c). Accordingly, discretionary considerations are first reviewed for the Petition on its own, and then reviewed if joinder were to be granted.” slip op. at 2
Discretionary denialPatents in suitUS 8,222,516 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Cerence Operating CompanyInstitution deniedPTAB · Aug 4, 2025 · IPR2025-00457 · APJ Kalyan K Deshpande · IPR · Director review
The Director granted Patent Owner’s discretionary-denial request and denied institution under § 314(a) because the district court trial is scheduled before the projected final written decision.
RulingsDirector review decision- Director reviewDirector review, deniedOther
“After considering the parties’ arguments and the record, and in view of all relevant considerations, discretionary denial of institution is appropriate in this proceeding. This determination is based on the totality of the evidence and arguments the parties have presented. In particular, the projected final written decision due date in the Board proceeding is October 8, 2026. The district court’s scheduled trial date is April 20, 2026. DD Req. 6. As such, it is unlikely that a final written decision in this proceeding will issue before the district court trial occurs, resulting in significant duplication of effort, additional expense for the parties, and a risk of inconsistent decisions. Additionally, there is insufficient evidence that the district court is likely to stay its proceeding even if the Board were to institute trial. DD Opp. 1–2. These considerations favor discretionary denial. Although certain arguments are highlighted above, the determination to exercise discretion to deny institution is based on a holistic assessment of all of the evidence and arguments presented. Accordingly, the Petition is denied under 35 U.S.C. § 314(a).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“In particular, the projected final written decision due date in the Board proceeding is October 8, 2026. The district court’s scheduled trial date is April 20, 2026. DD Req. 6. As such, it is unlikely that a final written decision in this proceeding will issue before the district court trial occurs, resulting in significant duplication of effort, additional expense for the parties, and a risk of inconsistent decisions. Additionally, there is insufficient evidence that the district court is likely to stay its proceeding even if the Board were to institute trial. DD Opp. 1–2. These considerations favor discretionary denial. Although certain arguments are highlighted above, the determination to exercise discretion to deny institution is based on a holistic assessment of all of the evidence and arguments presented. Accordingly, the Petition is denied under 35 U.S.C. § 314(a).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“to exercise discretion to deny institution is based on a holistic assessment of all of the evidence and arguments presented. Accordingly, the Petition is denied under 35 U.S.C. § 314(a).” slip op. at 2
Discretionary denialPatents in suitUS 7,680,334 - Cellco Partnership D/B/A Verizon Wireless / T-Mobile USA, Inc. et al. v. Pegasus Wireless Innovation LLCInstitution deniedPTAB · Jun 26, 2025 · IPR2025-00293 · APJ Kalyan K Deshpande · IPR · Director review
The Director granted the Patent Owner’s discretionary-denial request and denied institution under § 314(a), citing the parallel district court trial schedule and investment.
RulingsDirector review decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“In particular, the projected final written decision due date for IPR2025-00137 is July 17, 2026, for IPR2025-00138 is July 28, 2026, for IPR2025-00292 is August 5, 2026, and for IPR2025-00293 is August 2, 2026. DD Req. 5; IPR2025-00138, Paper 12, 6; IPR2025-000292, Paper 12, 5–6; IPR2025-00293, Paper 12, 7. The district court’s scheduled trial date is September 8, 2025, and the time-to-trial statistics suggest trial will begin in November 2025. DD Req. 5–8. As such, it is unlikely that a final written decision in these proceedings will issue before district court trial occurs. Additionally, there is insufficient evidence that the district court is likely to stay its proceeding even if the Board were to institute trial, and there has been meaningful investment in the parallel proceeding by the 2 Unless indicated otherwise, citations are to papers in IPR2025-00137. The parties filed similar papers in IPR2025-00138, IPR2025-00290, IPR2025- 00291, IPR2025-00292, IPR2025-00293, and IPR2025-00317. parties. Id. at 4–5; 11–15. For example, fact discovery has closed and the parties have participated in a Markman hearing. Id. at 14–15.” slip op. at 3
- Director reviewOther
“After considering the parties’ arguments and the record, and in view of all relevant considerations, discretionary denial of institution is appropriate in these proceedings. This determination is based on the totality of the evidence and arguments the parties have presented.” slip op. at 3
Discretionary denialPatents in suitUS 10,009,161 - Sportradar AG v. Sportscastr Inc. (D/B/A Panda Interactive)Institution deniedPTAB · Jun 25, 2025 · IPR2025-00268 · APJ Coke Morgan Stewart · IPR · Director review
The Director granted Patent Owner’s request for discretionary denial and denied institution under § 314(a), citing the district court’s earlier trial date and investment in that proceeding.
RulingsDirector review decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“trial date is January 23, 2026. Id. As such, it is unlikely that a final written decision will issue before the district court trial occurs. Furthermore, the parties have made meaningful investment in the district court proceeding. For example, a Markman hearing was held on May 9, 2025, and fact discovery is scheduled to close in August 2025. Id. at 13; DD Req. 6. Additionally, there is insufficient evidence that the district court is likely to stay its proceeding even if the Board were to institute trial. DD Opp. 6– 7. These considerations favor discretionary denial.” slip op. at 3
- Other 314aInstitution denied discretionary otherDenied
“Although certain arguments are highlighted above, the determination to exercise discretion to deny institution is based on a holistic assessment of all of the evidence and arguments presented. Accordingly, the Petition is denied under 35 U.S.C. § 314(a).” slip op. at 4
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingNot reached
“Petitioner filed the Petition and an accompanying motion for joinder to IPR2024-01308, a proceeding that the Board instituted on March 6, 2025. Genius Sports Ltd. v. SportsCastr Inc. (d/b/a PANDA Interactive), IPR2024-01308, Paper 9 at 61 (PTAB Mar. 6, 2025). 2 The Board first determines whether to institute a proceeding before considering a motion for joinder. 35 U.S.C. § 315(c). Accordingly, discretionary considerations are first reviewed for the Petition on its own, and then reviewed if joinder were to be granted.” slip op. at 2
Discretionary denialPatents in suitUS 10,805,687 - Sportradar AG v. Sportscastr Inc. (D/B/A Panda Interactive)Institution deniedPTAB · Jun 25, 2025 · IPR2025-00265 · IPR · Director review
The Director granted Patent Owner’s discretionary-denial request and denied institution under § 314(a), citing the district-court schedule and investment and the totality of the circumstances.
RulingsDirector review decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“trial date is January 23, 2026. Id. As such, it is unlikely that a final written decision will issue before the district court trial occurs. Furthermore, the parties have made meaningful investment in the district court proceeding. For example, a Markman hearing was held on May 9, 2025, and fact discovery is scheduled to close in August 2025. Id. at 13; DD Req. 6. Additionally, there is insufficient evidence that the district court is likely to stay its proceeding even if the Board were to institute trial. DD Opp. 6– 7. These considerations favor discretionary denial. Second, review of the facts as if joinder were to be granted also favors discretionary denial. The projected final written decision due date for IPR2024-01308, the proceeding that Petitioner seeks to join, is March 6, 2026. Id. at 8.3 Therefore, even if joinder were granted, it is unlikely that a final written decision will issue before the district court trial occurs.” slip op. at 3
- Other 314aInstitution denied discretionary otherDenied
“Although certain arguments are highlighted above, the determination to exercise discretion to deny institution is based on a holistic assessment of all of the evidence and arguments presented. Accordingly, the Petition is denied under 35 U.S.C. § 314(a). In consideration of the foregoing, it is: ORDERED that Patent Owner’s request for discretionary denial is granted; and FURTHER ORDERED that the Petition is denied, and no trial is instituted.” slip op. at 4
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingNot reached
“Petitioner filed the Petition and an accompanying motion for joinder to IPR2024-01308, a proceeding that the Board instituted on March 6, 2025. Genius Sports Ltd. v. SportsCastr Inc. (d/b/a PANDA Interactive), IPR2024-01308, Paper 9 at 61 (PTAB Mar. 6, 2025). 2 The Board first determines whether to institute a proceeding before considering a motion for joinder. 35 U.S.C. § 315(c). Accordingly, discretionary considerations are first reviewed for the Petition on its own, and then reviewed if joinder were to be granted.” slip op. at 2
Discretionary denialPatents in suitUS 10,425,697 - 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 - 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
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.