- Advanced Micro Devices, Inc. v. Advanced Cluster Systems, Inc.Institution deniedPTAB · Sep 3, 2025 · IPR2025-00863 · APJ Coke Morgan Stewart · IPR · Director review
The Director denied institution of IPR of the challenged patent under § 314(a), citing settled expectations, repeated prior challenges, and insufficiently tailored national-security arguments.
RulingsDirector review decision- Settled expectationsInstitution denied settled expectationsInstitution denied
“Other considerations weigh in favor of discretionary denial. In particular, the challenged patent has been in force for approximately six years, creating settled expectations for Patent Owner. Additionally, the” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied
“1 Citations are to papers in IPR2025-00862. The parties filed similar papers in IPR2025-00863. 2 Petitioner filed motions for joinder to IPR2025-00794 and IPR2025-00795, respectively; however, those proceedings have been denied institution. As such, this decision will address the discretionary considerations for these Petitions on their own. challenged patent was involved in two prior Board proceedings. In those prior proceedings, the Board denied institution finding that the petitions did not present a reasonable likelihood that a challenged claim was unpatentable. Paper 12, 3; NVIDIA Corp. v. Advanced Cluster Sys., Inc., IPR2021-00019, Paper 9 (PTAB May 5, 2021) (decision denying institution); NVIDIA Corp. v. Advanced Cluster Sys., Inc., IPR2021-00020, Paper 9 (PTAB May 5, 2021) (decision denying institution). Even absent road mapping, repeated prior challenges weigh against institution.” slip op. at 2
- Other 314aInstitution denied discretionary otherInstitution denied
“Petitioner also argues that national security interests weigh against discretionary denial. DD Opp. 2–6. In particular, Petitioner states that its products “are at the heart of AI, supercomputers, and healthcare applications—all technologies recognized by the U.S. government as vital to the country.” Id. at 2. Petitioner, however, does not explain in sufficient detail why review of the challenged patents is in the interest of national security. That is, Petitioner’s arguments are not narrowly-tailored towards particular products, and Petitioner does not sufficiently explain how national security interests warrant review of the specific patents challenged in these proceedings. 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
Discretionary denialPatents in suitUS 10,333,768 - Zhuhai Cosmx Battery Co., Ltd. v. Ningde Amperex Technology LimitedInstitution deniedPTAB · Sep 3, 2025 · IPR2025-00722 · APJ Coke Morgan Stewart · IPR · Director review
The Director denied institution of IPR2025-00722 under §314(a), citing the repeat challenge to the same patent and Petitioner’s lower ranking of this petition.
RulingsDirector review decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“IPR2025-00722 presents different circumstances. The Petition in IPR2025-00722 is the second petition filed by Petitioner against U.S. Patent No. 11,799,131, which is also the subject of IPR2025-00431. Repeat challenges weigh against institution. In addition, Petitioner ranks the 1 Citations are to papers in IPR2025-00524. The parties filed similar papers in IPR2025-00722. petition in IPR2025-00431 above the Petition in IPR2025-00722. See IPR2025-00722, Paper 3, 5. These considerations favor discretionary denial.” slip op. at 2
Discretionary denialPatents in suitUS 11,799,131 - Resmed Corp. v. Cleveland Medical Devices, Inc.Institution deniedPTAB · Jun 10, 2025 · IPR2025-00157 · APJ Cynthia M Hardman · IPR · Institution
The Board denied institution of ResMed’s challenge to claims 1–3, 6, and 12–20 under General Plastic because the follow-on petition followed an earlier petition challenging the same claims.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“We find that in view of Petitioner’s prior petition, this factor favors discretionary denial. Code200 is distinguishable. There, the Board exercised its discretion to deny institution of the earlier petitions under 35 U.S.C. § 314(a) based on Fintiv. Code200, Paper 18, 2 n.3. Here, the Board did not discretionarily deny the previous petition, but rather denied it because Petitioner failed to carry its burden of demonstrating a threshold requirement for post-grant review, namely that the patent is eligible for postgrant review. See PGR Dec. 9–10, 24. In evaluating the eligibility issue, the Board thoroughly addressed the merits of Petitioner’s arguments that the ’284 patent claims lack adequate written description and enablement support in the priority applications such that the claims are not entitled to any of the pre-2013 priority dates listed on the face of the patent. See PGR Dec. 10–24. This issue extensively overlapped with Petitioner’s grounds of unpatentability based on lack of written description and enablement in the post-grant petition, which Petitioner included together with prior art challenges. See PGR Dec. 6–7. As such, contrary to Petitioner’s argument, it did have “the opportunity to pursue a decision on the merits,” but failed to carry its burden to secure postgrant review. Prelim. Reply 1 (emphasis added).” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied general plasticInstitution denied
“institute review. An inter partes review may not be instituted unless the information presented in the Petition and the Preliminary Response shows “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). For the reasons explained below, we exercise our discretion to deny institution of this follow-on petition because Petitioner previously filed a post-grant review petition challenging the same claims of the same patent.” slip op. at 2
- BurdenNot reached
“III. REMAINING ISSUES Because we deny the Petition under 35 U.S.C. § 314(a) and General Plastic, we need not reach the parties’ additional arguments regarding discretionary denial or the merits of Petitioner’s unpatentability challenges.” slip op. at 15
Discretionary denialPatents in suitUS 11,602,284 - Juniper Networks, Inc. v. Orckit CorporationInstitution deniedPTAB · Dec 11, 2024 · IPR2024-00895 · APJ Brent M Dougal · IPR · Institution
Institution was denied for claims 32–54 because the General Plastic factors favored discretionary denial of Juniper’s follow-on petition.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“Thus, under the first General Plastic factor, we determine that the same petitioner previously filed a petition directed to materially3 the same claims of the ’111 patent, as all claims include language that is either identical to previously challenged claims or is not materially different from the previously challenged claims.” slip op. at 7
Discretionary denialPatents in suitUS 10,652,111 - Dental Imaging Technologies Corporation v. 3shape A/SInstitution deniedPTAB · Oct 29, 2024 · IPR2024-00849 · APJ James J Mayberry · IPR · Institution
The Board denied institution of review for claims 1, 2, 4, 5, 9, 10, and 12–17 under General Plastic discretion and denied joinder; it did not reach the merits.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“g. Summary and Conclusion In summary, we determine that factors 1, 3, and 6 weigh in favor of discretionary denial, factors 2, and 4 weigh against discretionary denial, and factors 5 and 7 are neutral. Considering these factors as a whole, and on this record, we determine that the facts here weigh in favor of exercising discretion under 35 U.S.C. § 314(a) to deny institution. Significant to our analysis is that the similarities in the facts in the instant proceeding and Uniloc outweigh the differences. Specifically, the primary difference between the facts here and the facts in Uniloc is that Petitioner explained its knowledge of the prior art and, as to Lehmann II, Petitioner demonstrated that it was not aware of Lehmann II prior to filing the first petition. In Uniloc, Apple made no such showing. As we discuss above, however, the significance of Lehmann II in this proceeding may be limited, given our initial determination of the merits of Patent Owner’s arguments against Lehmann II in the Medit IPR. As such, the lack of knowledge of Lehmann II is insufficient to counter the similarities between this proceeding and Uniloc.” slip op. at 24
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“2. Merits Analysis Having decided to exercise discretion to deny institution, we need not turn to the merits of the Petition and Motion. III. CONCLUSION We determine that exercising our discretion to not institute this proceeding is warranted based on our precedential decisions in General Plastic and Uniloc. Accordingly, the Petition and Motion are denied.” slip op. at 24
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“(c) JOINDER.—If the Director institutes an inter partes review, the Director, in his or her discretion, may join as a party to that inter partes review any person who properly files a petition under section 311 that the Director, after receiving a preliminary response under section 313 or the expiration of the time for filing such a response, determines warrants the institution of an inter parties review under section 314. “To join a party to an instituted [inter partes review (IPR)], the plain language of § 315(c) requires two different decisions.” Facebook, Inc. v. Windy City Innovations, LLC, 973 F.3d 1321, 1332 (Fed. Cir. 2020). “First, the statute requires that the Director (or the Board acting through a delegation of authority) . . . determine whether the joinder applicant’s petition for IPR ‘warrants’ institution under § 314.” Id. “Second, to effect joinder, § 315(c) requires the Director to exercise h[er] discretion to decide whether to ‘join as a party’ the joinder applicant.” Id. As the moving party, Petitioner bears the burden of proving that it is entitled to joinder. 37 C.F.R. § 42.20(c). A motion for joinder should: (1) set forth the reasons joinder is appropriate; (2) identify any new grounds of unpatentability asserted in the petition; and (3) explain what impact (if any) joinder would have on the trial schedule for the existing review. See Kyocera Corp. v. Softview LLC, IPR2013-00004, Paper 15 at 4 (PTAB Apr. 24, 2013).” slip op. at 14
Discretionary denialPatents in suitUS 10,695,151 - Aylo Freesites Ltd. v. DISH Technologies L.L.C.Institution deniedPTAB · Aug 13, 2024 · IPR2024-00519 · APJ Juliet Mitchell Dirba · IPR · Institution
The Board denied institution of IPR challenging claims 1–21 under § 314(a), finding the General Plastic factors favored or were neutral toward discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“We agree with Patent Owner (Prelim. Resp. 7) that Petitioner fails to provide any evidence or testimony to substantiate the manner and timing of its search efforts. All we can glean from Petitioner’s attorney argument is that Petitioner discovered Leaning almost three months after it filed the petition in IPR2024-00048. See Pet. 63–64. Petitioner makes no attempt to 10 On this basis, Patent Owner also argues that we should exercise our discretion to deny institution under 35 U.S.C. § 325(d). Prelim. Resp. 14– 21. We need not reach this issue. petition or that it could not have found Leaning by exercising reasonable diligence at that time. Furthermore, Petitioner’s allusion to the allegedly fruitless search efforts of USPTO examiners and other litigants (see Pet. 64) does not justify Petitioner’s actions. Thus, we find that Petitioner has not sufficiently explained why it could not have found Leaning in earlier searches through the exercise of reasonable diligence before it filed the petition in IPR2024-00048. See General Plastic at 20.” slip op. at 12
Discretionary denialPatents in suitUS 8,868,772 - Aylo Freesites Ltd. v. DISH Technologies L.L.C.Institution deniedPTAB · Aug 13, 2024 · IPR2024-00518 · APJ Juliet Mitchell Dirba · IPR · Institution
The Board denied institution of IPR on claims 1–16 under § 314(a), exercising discretion based on the General Plastic factors.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“We agree with Patent Owner (Prelim. Resp. 7) that Petitioner fails to provide any evidence or testimony to substantiate the manner and timing of its search efforts. All we can glean from Petitioner’s attorney argument is 9 On this basis, Patent Owner also argues that we should exercise our discretion to deny institution under 35 U.S.C. § 325(d). Prelim. Resp. 14– 21. We need not reach this issue. petition in IPR2024-00047. See Pet. 62. Petitioner makes no attempt to establish that it could not have known of Leaning at the time of the earlier petition or that it could not have found Leaning by exercising reasonable diligence at that time. Furthermore, Petitioner’s allusion to the allegedly fruitless search efforts of USPTO examiners and other litigants (see Pet. 62) does not justify Petitioner’s actions. Thus, we find that Petitioner has not sufficiently explained why it could not have found Leaning in earlier searches through the exercise of reasonable diligence before it filed the petition in IPR2024-00047. See General Plastic at 20.” slip op. at 12
Discretionary denialPatents in suitUS 9,407,564 - Aylo Freesites Ltd. v. DISH Technologies L.L.C.Institution deniedPTAB · Aug 13, 2024 · IPR2024-00513 · APJ Juliet Mitchell Dirba · IPR · Institution
The Board denied institution of review of claims 1–18, finding the General Plastic factors favored or were neutral to discretionary denial under § 314(a).
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDenied
“claims, including all of the independent claims of the ’156 patent. Only one of the 18 claims challenged in the instant Petition is not included in the earlier petition, and Petitioner’s treatment of this claim comprises about one page of analysis. Given that the two petitions challenge nearly all of the same claims of the ’156 patent, we find that this factor weighs in favor of exercising discretion to deny institution.” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“35 U.S.C. § 314(a) provides that the Director may not authorize an inter partes review to be instituted unless the Director determines that the information presented in the petition filed under section 311 and any response filed under section 313 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. Section 314(a) does not require the Director to institute a 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” slip op. at 9
Discretionary denialPatents in suitUS 10,757,156 - Aylo Freesites Ltd v. DISH Technologies L.L.C.Institution deniedPTAB · Aug 13, 2024 · IPR2024-00512 · APJ John A Hudalla · IPR · Institution
The Board denied institution for all challenged claims under § 314(a), exercising discretion based on the General Plastic factors.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“In General Plastic, the Board set forth a non-exhaustive list of factors to consider in evaluating whether to exercise discretion, under § 314(a), to deny a petition challenging a patent previously challenged before the Board. Those factors include: 1. whether the same petitioner previously filed a petition directed to the same claims of the same patent; 2. whether at the time of filing of the first petition the petitioner knew of the prior art asserted in the second petition or should have known of it; 3. whether at the time of filing of the second petition the petitioner already received the patent owner’s preliminary response to the first petition or received the Board’s decision on whether to institute review in the first petition; 4. the length of time that elapsed between the time the petitioner learned of the prior art asserted in the second petition and the filing of the second petition; 5. whether the petitioner provides adequate explanation for the time elapsed between the filings of multiple petitions directed to the same claims of the same patent; 6. the finite resources of the Board; and 7. the requirement under 35 U.S.C. § 316(a)(11) to issue a final determination not later than 1 year after the date on which the Director notices institution of review. General Plastic at 16 (citing NVIDIA Corp. v. Samsung Elecs. Co., IPR2016-00134, Paper 9 at 6–7 (PTAB May 4, 2016)). These factors are “a non-exhaustive list” and “additional factors may arise in other cases for consideration, where appropriate.” Id. at 16, 18.” slip op. at 9
Discretionary denialPatents in suitUS 11,470,138 - Aylo Freesites Ltd v. DISH Technologies L.L.C.Institution deniedPTAB · Aug 7, 2024 · IPR2024-00516 · APJ Thu A Dang · IPR · Institution
The Board denied institution on all challenged claims under § 314(a), finding that the General Plastic factors, particularly factors 1–3, 5, and 6, favored discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“evidence or testimony to substantiate the manner and timing of its search efforts. See Prelim. Resp. 6–9. Here, Petitioner merely provides an attorney argument that Petitioner discovered Leaning on January 5, 2024 (see Pet. 58), which is almost three months after Petitioner filed the petition in IPR2024-00046. Petitioner makes no attempt to establish that it could not have known of Leaning at the time of the IPR2024-00046 petition or that it could not have found Leaning by exercising reasonable diligence at that time. Furthermore, although Petitioner contends that Leaning was not discovered or relied upon by USPTO examiners, ITC respondents, or other litigants (see Pet. 58), allegedly fruitless search efforts of others do not justify Petitioner’s actions. On this record, we find that Petitioner has not sufficiently explained why it could not have found Leaning in earlier searches through the exercise of reasonable diligence before it filed the petition in IPR2024-00046. See General Plastic at 20.” slip op. at 15
Discretionary denialPatents in suitUS 10,951,680
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.