- Viance, LLC v. Koppers Performance Chemicals, Inc.Institution deniedPTAB · Aug 19, 2026 · PGR2026-00023 · APJ John A Squires · PGR · Director review
The Director denied the PGR petition and instituted no trial because Petitioner failed to identify Venator as a real party in interest within the statutory filing period.
RulingsDirector review decision- PTAB / AIA Trials › Real party in interest / privityInstitution denied rpiDecided for patent owner
“However, as I previously explained, RPIs are not limited to entities that are actually funding and controlling the proceeding but include entities that have the ability to control the proceeding. See Tianma, IPR2025-01579, Paper 12 at 9–10. Petitioner argues that its two owners do not have unilateral control of Petitioner. However, unilateral control is not the standard, and control of Petitioner is vested solely in its two owners as members of the Board of Directors. See Moyes Decl. ¶ 7. Accordingly, I am not persuaded that Venator and Lanxess do not have the ability to control” slip op. at 3
- PTAB / AIA Trials › §315(b) time barDecided for patent owner
“Patent Owner further argues that Petitioner cannot correct its RPI listing because adding an RPI would require a new filing date that places the Petition outside the 9-month window for filing a PGR. DD Opp. 11–12 (citing Corning, IPR20214-00440, Paper 68 at 24). Patent Owner is correct. See Sun Pharm. Indus., Inc. v. Biofrontera, Inc., PGR2026-00021, Paper 12 at 4 (Director May 26, 2026) (denying PGR petition because Petitioner did not meet the requirement to name all RPI within the statutory timeframe for filing a PGR petition). Accordingly, this Petition is denied, and Petitioner may file an IPR petition listing the appropriate real parties in interest.3” slip op. at 4
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied rpiInstitution denied
“listing because adding an RPI would require a new filing date that places the Petition outside the 9-month window for filing a PGR. DD Opp. 11–12 (citing Corning, IPR20214-00440, Paper 68 at 24). Patent Owner is correct. See Sun Pharm. Indus., Inc. v. Biofrontera, Inc., PGR2026-00021, Paper 12 at 4 (Director May 26, 2026) (denying PGR petition because Petitioner did not meet the requirement to name all RPI within the statutory timeframe for filing a PGR petition). Accordingly, this Petition is denied, and Petitioner may file an IPR petition listing the appropriate real parties in interest.3 In consideration of the foregoing, it is: ORDERED that the Petition is denied, and no trial is instituted.” slip op. at 4
Discretionary denialPatents in suitUS 12,370,716 - Sun Pharmaceutical Industries, Inc. v. Biofrontera Inc.Institution deniedPTAB · May 26, 2026 · PGR2026-00021 · APJ John A Squires · PGR · Director review
The Director denied Sun Pharmaceutical Industries’ PGR petition because it failed to show that it had identified all real parties in interest.
RulingsDirector review decision- PTAB / AIA Trials › Real party in interest / privityInstitution denied rpiDecided for patent owner
“As I previously explained, RPIs are not limited to entities that are actually funding and controlling the proceeding, but include entities that have the ability to control the proceeding. See Tianma Microelectronics (Director Mar. 18, 2026) (precedential) (“With its identification of RPIs in dispute, it is Petitioner’s burden to bring forth evidence or arguments demonstrating that it had named all RPIs—and that none were foreign governments or entities a foreign government had the ability to control.”); see also Worlds Inc. v. Bungie, Inc., 903 F.3d 1237, 1244–45 (Fed. Cir. 2018) (remanding to the Board to further consider RPI where the patent owner identified an unnamed party with the “opportunity to control” the proceeding). Petitioner has not provided sufficient evidence that SPI Ltd., the corporate parent and 100% owner of SPI Inc., does not have the ability to control the proceeding. Rather, Petitioner’s declaration evidence is focused on whether SPI Inc. is actually funding or controlling the proceeding. See Ex. 1021 ¶ 4 (“SPI Inc. is an indirect wholly-owned subsidiary of Sun Pharmaceutical Industries, Ltd.”). On this record, Petitioner fails to carry its burden to establish that it has identified all RPIs.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“(Director Mar. 18, 2026) (precedential) (“With its identification of RPIs in dispute, it is Petitioner’s burden to bring forth evidence or arguments demonstrating that it had named all RPIs—and that none were foreign governments or entities a foreign government had the ability to control.”); see also Worlds Inc. v. Bungie, Inc., 903 F.3d 1237, 1244–45 (Fed. Cir. 2018) (remanding to the Board to further consider RPI where the patent owner identified an unnamed party with the “opportunity to control” the proceeding). Petitioner has not provided sufficient evidence that SPI Ltd., the corporate parent and 100% owner of SPI Inc., does not have the ability to control the proceeding. Rather, Petitioner’s declaration evidence is focused on whether SPI Inc. is actually funding or controlling the proceeding. See Ex. 1021 ¶ 4 (“SPI Inc. is an indirect wholly-owned subsidiary of Sun Pharmaceutical Industries, Ltd.”). On this record, Petitioner fails to carry its burden to establish that it has identified all RPIs.” slip op. at 3
Discretionary denialPatents in suitUS 12,280,146 - Tianma Microelectronics Co., Ltd. v. LG Display Co., Ltd.Institution deniedPTAB · Mar 18, 2026 · IPR2025-01579 · APJ John A Squires · IPR · Director review
The Director denied institution because Petitioner failed to establish that a foreign government was not an RPI, making Petitioner ineligible to file the IPR.
RulingsDirector review decision- PTAB / AIA Trials › Real party in interest / privityInstitution denied rpiInstitution denied
“Patent Owner’s evidence is sufficient to put into dispute whether the Petition identified all RPIs and whether there is an RPI who is not a “person” eligible to file an IPR. See Worlds Inc. v. Bungie, Inc., 903 F.3d 1237, 1244 (Fed. Cir. 2018) (“[A] patent owner must produce some evidence that tends to show that a particular third party should be named a real party in interest.”); Yangtze Memory Techs. Co. v. Micron Tech., Inc., IPR2025- 00098, Paper 38 at 7 (Director Jan. 15, 2026) (informative) (explaining that the Office’s “mandate to protect the public interest is especially compelling” where a petitioner does not identify all RPIs). Patent Owner’s evidence that Petitioner is owned by AVIC Innovation and AVIC, AVIC is owned by a foreign government, and AVIC is included on the entity list is particularly persuasive. DD Req. 7–8 (citing Exs. 2013–19).” slip op. at 9
- Other 314aInstitution denied discretionary otherInstitution denied
“Today’s decision is consistent with Return Mail and—even if Return Mail reached the opposite conclusion—would be comfortably within the Office’s settled broad discretion in deciding whether to use its limited resources to institute IPR in any given case. Apple Inc. v. Squires, No. 2024- 1864, 2026 WL 406495, at *7 (Fed. Cir. Feb. 13, 2026) (“[T]he Director has broad and protected discretion not to launch an IPR, even when the statutory pre-conditions are met.”). Indeed, as to the exercise of discretion, as I stated in the Memorandum, “the integrity of PTAB proceedings depends on knowing who is behind a petition—who funds it, directs it, and/or benefits from it. Any opacity in that chain of control invites exploitation, may facilitate technology transfer contrary to U.S. law, regulation, and interests, and serves only to undermine public confidence in the integrity of the patent system.” Memorandum 4. Notions of fundamental fairness dictate no other result.” slip op. at 7
Discretionary denialPatents in suitUS 11,251,394 - Analog Devices, Inc. v. Number 14 B.V.Institution deniedPTAB · Jul 16, 2025 · IPR2025-00550 · APJ Coke Morgan Stewart · IPR · Director review
The Director granted Patent Owner’s discretionary-denial requests and denied the petitions under § 314(a), so no trial was instituted.
RulingsDirector review decision- Settled expectationsInstitution denied settled expectationsInstitution denied
“In particular, the challenged patents have been in force for more than 13 years, creating strong settled expectations, and Petitioner does not provide any persuasive reasoning why an inter partes review is an appropriate use of Board resources. Dabico Airport Sols. Inc. v. AXA Power ApS, IPR2025-00408, Paper 21 at 2–3 (Director June 18, 2025).” slip op. at 2
- PTAB / AIA Trials › Real party in interest / privityInstitution denied rpiInstitution denied
“Furthermore, Patent Owner presents evidence that Petitioner’s real party in interest (and now wholly owned subsidiary2) controlled prosecution of and maintained the involved patents, and paid “millions of dollars in royalties.” DD Req. 18–19; Ex. 2002 ¶ 88; Ex. 2001 § 2.2; Paper 1, iv (identifying Maxim Integrated Products, Inc. as a real party in interest). It is not an appropriate use of Office resources where a party or its real party in interest applied for and was issued a patent, but, as is the case here, now advocates for its unpatentability.” slip op. at 2
Discretionary denialPatents in suitUS 7,973,596 - Acxiom And Gerber v. Phoenix Licensing, LLCInstitution deniedPTAB · Nov 19, 2015 · CBM2015-00139 · APJ Stacey G White · CBM · Institution
The Board denied institution because Acxiom did not show it had standing as a real party in interest or privy of an entity sued for infringement.
RulingsInstitution decision- PTAB / AIA Trials › Real party in interest / privityInstitution denied rpiInstitution denied
“authority with respect to the defense, settlement, or compromise of any such claim.” Id. As to the Declaration, Brian Williamson, Senior Account Executive for Acxiom’s Gerber Account, declares that it is his “understanding that Gerber sent Acxiom notice of a demand for indemnification for costs and potential liabilities arising from the [patent infringement suits involving the subject patents] referencing the indemnification provision in the Services and Data Agreement.” Ex. 1128 ¶¶ 2, 6. We do not find this evidence to be sufficient to show that Petitioner has standing to bring this Petition. See 37 C.F.R. § 42.304(a) (stating that it is Petitioner’s burden to “demonstrate that the patent for which review is sought is a covered business method patent, and that the petitioner meets the eligibility requirements of § 42.302.”). As Patent Owner points out, “the Petition does not supply the demand for indemnification, Acxiom’s response, or any correspondence regarding indemnification.” Prelim. Resp. 4; cf. General Electric Co. v. Transdata, Inc., Case IPR2014-01380, slip op. at 7–8 (PTAB Apr. 15, 2015) (Paper 34) (an agreement to indemnify as to a specific lawsuit was sufficient evidence of privity). Similarly, the Williamson Declaration does not provide any details as to the purported demand for indemnity nor does it inform us of Petitioner’s view as to the merits of any such demand for indemnity. Nor does Mr. Williamson testify as to whether the Agreement was in force at the relevant time. Thus, Petitioner has not provided evidence sufficient to show that it has an obligation to indemnify Gerber or any other entity that may have been sued for infringement.3 Also, as discussed” slip op. at 5
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Motion to exclude, deniedDenied
“Default Protective Order and moves to seal Exhibits 1128 and 1129, as confidential pursuant to the Default Protective Order. Paper 5, 1. These Exhibits, however, are cited extensively in the Decision. Confidential information relied upon in a decision to grant or deny a request to institute ordinarily will be made public. Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,760 (Aug. 14, 2012). We are not persuaded that there is sufficient reason to depart from that principle. Therefore, Petitioner’s Motion to Seal is denied. Accordingly, we order Exhibits” slip op. at 6
Discretionary denialPatents in suitUS 7,860,744 - Acxiom Corporation v. Phoenix Licensing, LLCInstitution deniedPTAB · Nov 19, 2015 · CBM2015-00138 · APJ Stacey G White · CBM · Institution
The Board denied institution because Acxiom did not establish standing as a real party in interest or privy of an entity sued for infringement.
RulingsInstitution decision- PTAB / AIA Trials › Real party in interest / privityInstitution denied rpiInstitution denied
“authority with respect to the defense, settlement, or compromise of any such claim.” Id. As to the Declaration, Brian Williamson, Senior Account Executive for Acxiom’s Gerber Account, declares that it is his “understanding that Gerber sent Acxiom notice of a demand for indemnification for costs and potential liabilities arising from the [patent infringement suits involving the subject patents] referencing the indemnification provision in the Services and Data Agreement.” Ex. 1128 ¶¶ 2, 6. We do not find this evidence to be sufficient to show that Petitioner has standing to bring this Petition. See 37 C.F.R. § 42.304(a) (stating that it is Petitioner’s burden to “demonstrate that the patent for which review is sought is a covered business method patent, and that the petitioner meets the eligibility requirements of § 42.302.”). As Patent Owner points out, “the Petition does not supply the demand for indemnification, Acxiom’s response, or any correspondence regarding indemnification.” Prelim. Resp. 4; cf. General Electric Co. v. Transdata, Inc., Case IPR2014-01380, slip op. at 7–8 (PTAB Apr. 15, 2015) (Paper 34) (an agreement to indemnify as to a specific lawsuit was sufficient evidence of privity). Similarly, the Williamson Declaration does not provide any details as to the purported demand for indemnity nor does it inform us of Petitioner’s view as to the merits of any such demand for indemnity. Nor does Mr. Williamson testify as to whether the Agreement was in force at the relevant time. Thus, Petitioner has not provided evidence sufficient to show that it has an obligation to indemnify Gerber or any other entity that may have been sued for infringement.3 Also, as discussed” slip op. at 5
- ExcludeDenied
“Default Protective Order and moves to seal Exhibits 1128 and 1129, as confidential pursuant to the Default Protective Order. Paper 5, 1. These Exhibits, however, are cited extensively in the Decision. Confidential information relied upon in a decision to grant or deny a request to institute ordinarily will be made public. Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,760 (Aug. 14, 2012). We are not persuaded that there is sufficient reason to depart from that principle. Therefore, Petitioner’s Motion to Seal is denied. Accordingly, we order Exhibits base its standing on its relationship with AAA. See Acxiom Corp. v. Phoenix Licensing, LLC, Case CBM2015-00068, slip. op at 4–6 (PTAB Aug. 11, 2015) (Paper 23). 1128 and 1129 to be UNSEALED forty-five (45) days after the entry date of this decision.” slip op. at 6
Discretionary denialPatents in suitUS 8,738,435 - Acxiom Corporation v. Phoenix Licensing, LLCInstitution deniedPTAB · Nov 19, 2015 · CBM2015-00136 · APJ Stacey G White · CBM · Institution
The Board denied institution because Petitioner did not establish standing to seek covered business method review, failing to show it was a real party-in-interest or privy of a sued entity.
RulingsInstitution decision- PTAB / AIA Trials › Real party in interest / privityInstitution denied rpiInstitution denied
“authority with respect to the defense, settlement, or compromise of any such claim.” Id. As to the Declaration, Brian Williamson, Senior Account Executive for Acxiom’s Gerber Account, declares that it is his “understanding that Gerber sent Acxiom notice of a demand for indemnification for costs and potential liabilities arising from the [patent infringement suits involving the subject patents] referencing the indemnification provision in the Services and Data Agreement.” Ex. 1128 ¶¶ 2, 6. We do not find this evidence to be sufficient to show that Petitioner has standing to bring this Petition. See 37 C.F.R. § 42.304(a) (stating that it is Petitioner’s burden to “demonstrate that the patent for which review is sought is a covered business method patent, and that the petitioner meets the eligibility requirements of § 42.302.”).” slip op. at 5
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Motion to exclude, deniedDenied
“Default Protective Order and moves to seal Exhibits 1128 and 1129, as confidential pursuant to the Default Protective Order. Paper 5, 1. These Exhibits, however, are cited extensively in the Decision. Confidential information relied upon in a decision to grant or deny a request to institute ordinarily will be made public. Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,760 (Aug. 14, 2012). We are not persuaded that there is sufficient reason to depart from that principle. Therefore, Petitioner’s Motion to Seal is denied. Accordingly, we order Exhibits” slip op. at 6
Discretionary denialPatents in suitUS 7,856,375 - Acxiom Corporation v. Phoenix Licensing, LLCInstitution deniedPTAB · Nov 19, 2015 · CBM2015-00140 · APJ Stacey G White · CBM · Institution
The Board denied institution because Acxiom did not establish standing as a real party in interest or privy of an entity sued for infringement.
RulingsInstitution decision- PTAB / AIA Trials › Real party in interest / privityInstitution denied
“authority with respect to the defense, settlement, or compromise of any such claim.” Id. As to the Declaration, Brian Williamson, Senior Account Executive for Acxiom’s Gerber Account, declares that it is his “understanding that Gerber sent Acxiom notice of a demand for indemnification for costs and potential liabilities arising from the [patent infringement suits involving the subject patents] referencing the indemnification provision in the Services and Data Agreement.” Ex. 1128 ¶¶ 2, 6. We do not find this evidence to be sufficient to show that Petitioner has standing to bring this Petition. See 37 C.F.R. § 42.304(a) (stating that it is Petitioner’s burden to “demonstrate that the patent for which review is sought is a covered business method patent, and that the petitioner meets the eligibility requirements of § 42.302.”).” slip op. at 5
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Motion to exclude, deniedDenied
“Default Protective Order and moves to seal Exhibits 1128 and 1129, as confidential pursuant to the Default Protective Order. Paper 5, 1. These Exhibits, however, are cited extensively in the Decision. Confidential information relied upon in a decision to grant or deny a request to institute ordinarily will be made public. Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,760 (Aug. 14, 2012). We are not persuaded that there is sufficient reason to depart from that principle. Therefore, Petitioner’s Motion to Seal is denied. Accordingly, we order Exhibits” slip op. at 6
Discretionary denialPatents in suitUS 5,987,434 - Johnson Health Tech Co. Ltd. / Johnson Health Tech North America, Inc. v. Icon Health & Fitness, Inc.Institution deniedPTAB · Feb 11, 2015 · IPR2014-01242 · APJ Carl M Defranco · IPR · Institution
The Board denied institution because JHTNA was served with an infringement complaint more than one year before the petition, and JHT was its privy.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barInstitution denied
“review. Prelim. Resp. 3–23. Pursuant to 35 U.S.C. § 315(b), a party may not file a petition for inter partes review more than one-year after being served with a complaint alleging infringement of the patent. The one-year deadline helps to ensure that inter partes review provides a quick and cost effective alternative to litigation, and is not used as a tool for harassment or litigation gamesmanship. H.R. REP. NO. 112-98 at 48, as reprinted in 2011 U.S.C.C.A.N. at 78. In a Preliminary Proceeding,1 the petitioner bears the burden of showing compliance with the threshold requirement of § 315(b). Specifically, in order to show “standing” to file a petition, the petitioner “must certify . . . that the petitioner is not barred or estopped from requesting an inter partes review . . . .” 37 C.F.R. § 42.104(a) (first emphasis added). As grounds for standing, Petitioners purport that the claims challenged in the Petition were not added to the Utah Action until August 5, 2013, when Icon filed an amended complaint alleging infringement of the ’631 patent after completion of reexam and lifting of the stay. Pet. 1–2.” slip op. at 3
- PTAB / AIA Trials › Real party in interest / privityInstitution denied rpiDecided for patent owner
“issue of whether JHT is a “privy” of JHTNA for purposes of § 315(b). Specifically, § 315(b) includes within its reach any party that qualifies as a “privy of the petitioner.” In determining whether JHT is a privy of JHTNA, we consider the nature of the relationship between the parties at the time the statutorily-relevant complaint was served, i.e., December 27, 2010. See Taylor v. Sturgell, 553 U.S. 880, 892 (2008) (“A person who was not a party to a suit generally has not had a ‘full and fair opportunity to litigate’ the claims and issues settled in that suit.”). Ultimately, our analysis “seeks to determine whether the relationship between the purported ‘privy’ and the relevant other party is sufficiently close such that both should be bound by the trial outcome and related estoppels.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,759 (Aug. 14, 2012).” slip op. at 8
Discretionary denialPatents in suitUS 6,193,631
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.