- PTAB · Oct 17, 2025 · IPR2025-01096 · APJ Coke Morgan Stewart · IPR · Director review
The Director granted Patent Owner’s discretionary denial requests and denied the petitions, declining to institute inter partes review under § 314(a).
RulingsDirector review decision- Settled expectationsInstitution denied settled expectationsInstitution denied
“Other considerations, however, favor discretionary denial. For example, the challenged patents have been in force for ten, eight, and ten years, 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, IPR2025-00408, Paper 21 at 2–3 (Director June 18, 2025). Additionally, Patent Owner presents evidence demonstrating Petitioner had knowledge of the challenged patent in IPR2025-01096 as early as 2018. DD Req. 14. Accordingly, in the absence of sufficient explanation by Petitioner, Patent Owner’s strong settled expectations tip the balance in favor of discretionary denial.” slip op. at 2
- Director reviewDirector review, deniedDenied
“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 9,031,259 - PTAB · Oct 17, 2025 · IPR2025-01080 · APJ Coke Morgan Stewart · IPR · Director review
The Director granted Patent Owner’s discretionary-denial requests and denied the petitions under § 314(a), declining to institute review based on a holistic assessment, including settled expectations.
RulingsDirector review decision- Settled expectationsInstitution denied settled expectationsInstitution denied
“Other considerations, however, favor discretionary denial. For example, the challenged patents have been in force for ten, eight, and ten years, 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, IPR2025-00408, Paper 21 at 2–3 (Director June 18, 2025). Additionally, Patent Owner presents evidence demonstrating Petitioner had knowledge of the challenged patent in IPR2025-01096 as early as 2018. DD Req. 14. Accordingly, in the absence of sufficient explanation by Petitioner, Patent Owner’s strong settled expectations tip the balance in favor of discretionary denial.” slip op. at 2
- Director reviewDirector review, deniedDenied
“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). In consideration of the foregoing, it is: ORDERED that Patent Owner’s requests for discretionary denial are granted; and FURTHER ORDERED that the Petitions are denied, and no trial is instituted.” slip op. at 3
Discretionary denialPatents in suitUS 9,804,819 - PTAB · Oct 17, 2025 · IPR2025-01067 · APJ Coke Morgan Stewart · IPR · Director review
The Director denied institution under § 314(a), finding Patent Owner’s strong settled expectations favored discretionary denial.
RulingsDirector review decision- Settled expectationsInstitution denied settled expectationsDenied
“Other considerations, however, favor discretionary denial. For example, the challenged patents have been in force for ten, eight, and ten years, 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, IPR2025-00408, Paper 21 at 2–3 (Director June 18, 2025). Additionally, Patent Owner presents evidence demonstrating Petitioner had knowledge of the challenged patent in IPR2025-01096 as early as 2018. DD Req. 14. Accordingly, in the absence of sufficient explanation by Petitioner, Patent Owner’s strong settled expectations tip the balance in favor of discretionary denial.” slip op. at 2
- Director reviewDirector review, deniedInstitution denied
“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). In consideration of the foregoing, it is: ORDERED that Patent Owner’s requests for discretionary denial are granted; and FURTHER ORDERED that the Petitions are denied, and no trial is instituted.” slip op. at 3
Discretionary denialPatents in suitUS 9,070,374 - Fujirebio Diagnostics, Inc. v. Quanterix Corp.Institution deniedPTAB · Oct 17, 2025 · IPR2025-01060 · APJ Coke Morgan Stewart · IPR · Director review
The Director granted Quanterix’s request for discretionary denial and denied institution of IPR based on the examiner’s consideration of copying evidence and the holistic assessment.
RulingsDirector review decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“is appropriate because the patent examiner found that the objective indicia of nonobviousness evidence was persuasive in allowing the patent application. DD Req. 13–30. Although Petitioner addresses the sufficiency of Patent Owner’s evidence, Petitioner has not persuasively demonstrated that the Office erred in evaluating this evidence. DD Opp. 21; Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). Rather, Petitioner merely disagrees with the Examiner’s treatment of the evidence without showing material error. DD Opp. 21–26. “If reasonable minds can disagree regarding the purported treatment of the art or arguments, it cannot be said that the Office erred in a manner material to patentability.” See Advanced Bionics, Paper 6 at 9. Under these circumstances, discretionary denial is appropriate.” slip op. at 2
- Other 314aInstitution denied discretionary otherInstitution denied
“Furthermore, to the extent resolution of this issue may require additional evidence regarding objective indicia of nonobviousness, a district court may be the more appropriate venue, as it may allow for more robust discovery. Accordingly, the considerations that favor discretionary denial outweigh those that counsel against it. 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 3
- Obviousness (§103) › Objective indicia / secondary considerations › CopyingObjective indicia with nexusDecided for patent owner
“particular, in allowing the challenged patent, the patent examiner stated that Patent Owner provided rebuttal evidence of copying by others sufficient to overcome the obviousness rejection. Ex. 1002, 659–660. The patent examiner explained that “no group prior to the effective filing date had done more than perhaps suggest” using the claimed assay, “while dozens of groups utilized” that assay “after the date of Applicant’s contribution.” Id. at 660. Patent Owner argues that discretionary denial under 35 U.S.C. 325(d) is appropriate because the patent examiner found that the objective indicia of nonobviousness evidence was persuasive in allowing the patent application. DD Req. 13–30. Although Petitioner addresses the sufficiency of Patent Owner’s evidence, Petitioner has not persuasively demonstrated that the Office erred in evaluating this evidence. DD Opp. 21; Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). Rather, Petitioner merely disagrees with the Examiner’s treatment of the evidence without showing material error. DD Opp. 21–26. “If reasonable minds can disagree regarding the purported treatment of the art or arguments, it cannot be said that the Office erred in a manner material to patentability.” See Advanced Bionics, Paper 6 at 9. Under these circumstances, discretionary denial is appropriate.” slip op. at 2
§ 103 obviousnessDiscretionary denialPatents in suitUS 11,275,092 - Hisense USA Corporation / Hisense Electronica Mexico S.A. De C.V. v. Videolabs, Inc.Institution deniedPTAB · Oct 10, 2025 · IPR2025-00882 · APJ Coke Morgan Stewart · IPR · Director review
The Director granted Patent Owner’s discretionary-denial request and denied the petitions under § 314(a), declining to institute IPR based on a holistic assessment that included settled expectations.
RulingsDirector review decision- Settled expectationsInstitution denied settled expectationsGranted
“Other considerations, however, favor discretionary denial. In particular, the challenged patents have been in force for twelve and eleven years, creating settled expectations for Patent Owner. DD Req. 1, 7–8. Patent Owner also provides evidence that the challenged patents have been licensed to over twenty companies. Id. at 4; Ex. 2002. In addition, Patent Owner provides evidence that it has been in contact with Petitioner since December 2022, when Patent Owner sent Petitioner a notice letter regarding Patent Owner’s patent portfolio. DD Req. 4–5, 9; Ex. 2004. Patent Owner 1 Citations are to papers in IPR2025-00880. The parties filed similar papers in IPR2025-00881, IPR2025-00882, and IPR2025-00883. specifically notified Petitioner about the challenged patents in June 2023, when Patent Owner provided Petitioner with a claim chart during licensing negotiations. DD Req. 9. Petitioner’s arguments regarding Patent Owner’s settled expectations are not persuasive, and Petitioner does not otherwise provide 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
- Other 314aInstitution denied discretionary otherInstitution denied
“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). In consideration of the foregoing, it is: ORDERED that Patent Owner’s request for discretionary denial is granted; and FURTHER ORDERED that the Petitions are denied, and no trial is instituted.” slip op. at 3
Discretionary denialPatents in suitUS 8,291,236 - Ascentcare Dental Products, Inc. v. Solmetex, LLCInstitution deniedPTAB · Oct 10, 2025 · IPR2025-01059 · APJ Coke Morgan Stewart · IPR · Director review
The Director granted Patent Owner’s discretionary-denial requests and denied the petitions, declining to institute IPR under §§ 314(a) and 325(d).
RulingsDirector review decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Other considerations, however, favor discretionary denial. In particular, Patent Owner persuasively demonstrates that Petitioner relies on references that were considered extensively by the patent examiner during prosecution of the challenged patent, cited by the Patent Owner during the prosecution, or cumulative thereto. DD Req. 6–29. Petitioner does not 1 Citations are to papers in IPR2025-01020. The parties filed similar papers in IPR2025-01057 and IPR2025-01059. persuasively rebut Patent Owner’s arguments that the same prior art was previously presented to the Office. 35 U.S.C. § 325(d). Nor has Petitioner persuasively demonstrated that the Office erred in evaluating this art. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). Rather, Petitioner merely disagrees with the Examiner’s treatment of the art without showing clear error. DD Opp. 11–17. “If reasonable minds can disagree regarding the purported treatment of the art or arguments, it cannot be said that the Office erred in a manner material to patentability.” See Advanced Bionics, Paper 6 at 9. Petitioner’s assertion is insufficient to demonstrate material error by the Office. Under these circumstances, discretionary denial is appropriate.” slip op. at 2
- Other 314aDenied
“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) and 325(d). In consideration of the foregoing, it is: ORDERED that Patent Owner’s requests for discretionary denial are granted; and FURTHER ORDERED that the Petitions are denied, and no trial is instituted.” slip op. at 3
- Director reviewDirector review, deniedDenied
“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) and 325(d). In consideration of the foregoing, it is: ORDERED that Patent Owner’s requests for discretionary denial are granted; and FURTHER ORDERED that the Petitions are denied, and no trial is instituted.” slip op. at 3
Discretionary denialPatents in suitUS 11,744,686 - Hisense USA Corporation / Hisense Electronica Mexico S.A. De C.V. v. Videolabs, Inc.Institution deniedPTAB · Oct 10, 2025 · IPR2025-00880 · APJ Coke Morgan Stewart · IPR · Director review
The Director granted Patent Owner’s discretionary-denial request and denied the petitions under § 314(a), declining to institute inter partes review based on the totality of the circumstances, including settled expectations.
RulingsDirector review decision- Settled expectationsInstitution denied settled expectationsDenied
“Other considerations, however, favor discretionary denial. In particular, the challenged patents have been in force for twelve and eleven years, creating settled expectations for Patent Owner. DD Req. 1, 7–8. Patent Owner also provides evidence that the challenged patents have been licensed to over twenty companies. Id. at 4; Ex. 2002. In addition, Patent Owner provides evidence that it has been in contact with Petitioner since December 2022, when Patent Owner sent Petitioner a notice letter regarding Patent Owner’s patent portfolio. DD Req. 4–5, 9; Ex. 2004. Patent Owner 1 Citations are to papers in IPR2025-00880. The parties filed similar papers in IPR2025-00881, IPR2025-00882, and IPR2025-00883. specifically notified Petitioner about the challenged patents in June 2023, when Patent Owner provided Petitioner with a claim chart during licensing negotiations. DD Req. 9. Petitioner’s arguments regarding Patent Owner’s settled expectations are not persuasive, and Petitioner does not otherwise provide 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
- Other 314aInstitution denied discretionary otherDenied
“specifically notified Petitioner about the challenged patents in June 2023, when Patent Owner provided Petitioner with a claim chart during licensing negotiations. DD Req. 9. Petitioner’s arguments regarding Patent Owner’s settled expectations are not persuasive, and Petitioner does not otherwise provide 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). 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
- Director reviewDirector review, deniedDenied
“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). In consideration of the foregoing, it is: ORDERED that Patent Owner’s request for discretionary denial is granted; and FURTHER ORDERED that the Petitions are denied, and no trial is instituted.” slip op. at 3
Discretionary denialPatents in suitUS 8,291,236 - Ascentcare Dental Products, Inc. v. Solmetex, LLCInstitution deniedPTAB · Oct 10, 2025 · IPR2025-01057 · APJ Coke Morgan Stewart · IPR · Director review
The Director denied institution of IPR, finding discretionary denial appropriate under §§ 314(a) and 325(d) because the petition relied on previously considered or cumulative art and did not show material Office error.
RulingsDirector review decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“particular, Patent Owner persuasively demonstrates that Petitioner relies on references that were considered extensively by the patent examiner during prosecution of the challenged patent, cited by the Patent Owner during the prosecution, or cumulative thereto. DD Req. 6–29. Petitioner does not 1 Citations are to papers in IPR2025-01020. The parties filed similar papers in IPR2025-01057 and IPR2025-01059. persuasively rebut Patent Owner’s arguments that the same prior art was previously presented to the Office. 35 U.S.C. § 325(d). Nor has Petitioner persuasively demonstrated that the Office erred in evaluating this art. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). Rather, Petitioner merely disagrees with the Examiner’s treatment of the art without showing clear error. DD Opp. 11–17. “If reasonable minds can disagree regarding the purported treatment of the art or arguments, it cannot be said that the Office erred in a manner material to patentability.” See Advanced Bionics, Paper 6 at 9. Petitioner’s assertion is insufficient to demonstrate material error by the Office. Under these circumstances, discretionary denial is appropriate.” slip op. at 2
- 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 Petitions are denied under 35 U.S.C. §§ 314(a) and 325(d). In consideration of the foregoing, it is: ORDERED that Patent Owner’s requests for discretionary denial are granted; and FURTHER ORDERED that the Petitions are denied, and no trial is instituted.” slip op. at 3
Discretionary denialPatents in suitUS 11,589,970 - Ascentcare Dental Products, Inc. v. Solmetex, LLCInstitution deniedPTAB · Oct 10, 2025 · IPR2025-01020 · APJ Coke Morgan Stewart · IPR · Director review
The Director denied institution of IPR on the challenged petitions under §§ 314(a) and 325(d), finding the prior art was previously considered and no material Office error was shown.
RulingsDirector review decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“particular, Patent Owner persuasively demonstrates that Petitioner relies on references that were considered extensively by the patent examiner during prosecution of the challenged patent, cited by the Patent Owner during the prosecution, or cumulative thereto. DD Req. 6–29. Petitioner does not 1 Citations are to papers in IPR2025-01020. The parties filed similar papers in IPR2025-01057 and IPR2025-01059. persuasively rebut Patent Owner’s arguments that the same prior art was previously presented to the Office. 35 U.S.C. § 325(d). Nor has Petitioner persuasively demonstrated that the Office erred in evaluating this art. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). Rather, Petitioner merely disagrees with the Examiner’s treatment of the art without showing clear error. DD Opp. 11–17. “If reasonable minds can disagree regarding the purported treatment of the art or arguments, it cannot be said that the Office erred in a manner material to patentability.” See Advanced Bionics, Paper 6 at 9. Petitioner’s assertion is insufficient to demonstrate material error by the Office. Under these circumstances, discretionary denial is appropriate.” slip op. at 2
- Other 314aInstitution denied discretionary otherDenied
“the challenged patents, it is unclear whether a final written decision in this proceeding will issue after the district court trial occurs. In particular, the projected final written decision due date in the Board proceedings is December 18, 2026. DD Opp. 22. The district court does not have a scheduled trial date, but time-to-trial statistics suggest that the trial could begin before the projected final written decision due date. DD Req. 35. As such, these considerations neither favor nor counsel against discretionary denial.” slip op. at 2
- Director reviewDirector review, deniedDenied
“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) and 325(d). In consideration of the foregoing, it is: ORDERED that Patent Owner’s requests for discretionary denial are granted; and FURTHER ORDERED that the Petitions are denied, and no trial is instituted.” slip op. at 3
Discretionary denialPatents in suitUS 11,589,969 - United Microelectronics Corporation / Umc Group (USA) v. Advanced Integrated Circuit Process LLCInstitution deniedPTAB · Oct 10, 2025 · IPR2025-01093 · APJ Coke Morgan Stewart · IPR · Director review
The Director granted Patent Owner’s discretionary-denial request and denied the petitions under § 314(a), citing trial timing, duplication, and Patent Owner’s settled expectations.
RulingsDirector review decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“In particular, the projected final written decision due date in these Board proceedings is December, 2026. DD Req. 2. The district court’s scheduled trial date is June 22, 2026, and the time-to-trial statistics suggest trial will begin between July and September 2026. Id. at 25, 27. As such, it is unlikely that a final written decision in these proceedings will issue before district court trial occurs, resulting in significant duplication of effort, additional expense for the parties, and a risk of inconsistent decisions.” slip op. at 2
- Settled expectationsInstitution denied settled expectationsDenied
“Furthermore, the challenged patents have been in force for eleven, sixteen, fourteen, ten, thirteen, thirteen, and twelve 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 1 Citations are to papers in IPR2025-01053. The parties filed similar papers in IPR2025-01076, IPR2025-01079, IPR2025-01090, IPR2025-01091, IPR2025-01092, and IPR2025-01093. ApS, IPR2025-00408, Paper 21 at 2–3 (Director June 18, 2025). Petitioner’s argument that Patent Owner does not have settled expectations because Patent Owner did not previously assert the challenged patents against Petitioner does not defeat Patent Owner’s settled expectations. DD Opp. 5. Accordingly, in the absence of sufficient explanation, Patent Owner’s strong settled expectations further favor of discretionary denial.” slip op. at 2
- 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 Petitions are 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 Petitions are denied, and no trial is instituted.” slip op. at 3
Discretionary denialPatents in suitUS 8,587,076
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.