- Google LLC v. Secure Communication Technologies, LLCInstitution deniedPTAB · May 15, 2026 · IPR2026-00099 · APJ John A Squires · IPR · Director review
The Director denied Google’s petition and instituted no trial, exercising discretion based on the complete record and holistic assessment, including settled expectations.
RulingsDirector review decision- Settled expectationsInstitution denied settled expectationsDenied
“Petitioner’s arguments are not persuasive. Petitioner was aware of the challenged patent no later than February 2012, and Patent Owner specifically identified the patent as being of interest to mobile commerce providers. See Ex. 2004. Petitioner cited the challenged patent to the Office during prosecution of Petitioner’s own Application No. 13/716,675 in December 2012. See Ex. 2007. Application No. 13/716,675 is titled “Methods and Systems for Efficient Discovery of Devices in a Peer-to-Peer Network.” See Ex. 2006. Efficient discovery of devices in a peer-to-peer network appears to be relevant to both retail operations and the finding and tracking of personal electronic devices. Accordingly, Petitioner’s own actions indicate it was aware that the challenged patent was relevant to its technology space.” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for patent owner
“Finally, I do not agree with Petitioner’s assertion that the Office committed a material error during prosecution. While demonstrating error is usually one of the strongest considerations weighing against discretionary denial, here Petitioner’s material error argument is weak. Petitioner points to the notice of allowance, and focuses on a single phrase that appears in a rather long listing of limitations the examiner indicated were missing from the prior art. DD Opp. 2–3. According to Petitioner, the phrase “first, direct, short range separate local wireless link” never existed in the claims. Id. at 4. However, Petitioner acknowledges that the phrase “via a separate local wireless link” was part of the claims, as was the phrase “first, direct, short range” local wireless link. Id. Although the ultimate listing in the notice of allowance may constitute a clerical error, Petitioner has not demonstrated sufficiently that this error was material to the patentability of the challenged claims, especially considering the number of other limitations listed in the notice of allowance that the examiner determined to be missing from the reviewed prior art. Petitioner does not address those limitations in its error arguments. Id. at 3–6.” slip op. at 3
Discretionary denialPatents in suitUS 8,116,749 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. et al. v. Omni Medsci, Inc.Institution deniedPTAB · May 14, 2026 · IPR2025-01253 · APJ John A Squires · IPR · Director review
The Director vacated institution and denied the IPR petition because the patent was determined eligible for PGR and therefore not eligible for IPR.
RulingsDirector review decision- Director reviewDirector review, grantedDecided for patent owner
“Given my determination in PGR2026-00003 as to the ’790 patent’s PGR eligibility, and because a patent cannot be both PGR eligible and IPR eligible at the same time, it is appropriate to vacate institution of this IPR. See, e.g., Philip Morris Prods., S.A. v. RAI Strategic Holdings, Inc., IPR2020-01188, Paper 12 at 10–12 (PTAB Jan. 13, 2021); Paper 6, 3 n.2 (Samsung acknowledging that the ’790 patent is not eligible for simultaneous IPR and PGR). Accordingly, it is: ORDERED that the Notice granting institution of inter partes review (Paper 19) is vacated; and FURTHER ORDERED that the Petition is denied, and no trial is instituted.” slip op. at 3
Discretionary denialPatents in suitUS 12,193,790 - Hisense USA Corporation / Hisense Electronica Mexico S.A. De C.V. v. Videolabs, Inc.Institution deniedPTAB · Oct 10, 2025 · IPR2025-00881 · 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.
RulingsDirector review decision- Settled expectationsDecided for patent owner
“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 - Google LLC v. Advanced Coding Technologies LLCInstitution deniedPTAB · Oct 10, 2025 · IPR2025-01000 · APJ Kalyan K Deshpande · IPR · Director review
The Director denied institution under § 314(a), citing likely district court trial before the projected final written decision, settled expectations, and the holistic record.
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 11, 2026. DD Req. 6 n.1. The district court’s scheduled trial date is March 2, 2026, and the time-to-trial statistics suggest trial will begin between July 2026 and October 2026. Id. at 6–7; DD Opp. 45–48. 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.” slip op. at 2
- Settled expectationsInstitution denied settled expectationsDenied
“In addition, the challenged patents have been in force for thirteen, seven, and six years, creating 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, Petitioner’s arguments that the Office made a material error during prosecution are not persuasive. See DD Opp. 29–38.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for patent owner
“seven, and six years, creating 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, Petitioner’s arguments that the Office made a material error during prosecution are not persuasive. See DD Opp. 29–38.” 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).” slip op. at 3
Discretionary denialPatents in suitUS 10,218,995 - Belden Inc. / PPC Broadband, Inc. v. Commscope, Inc. Of North CarolinaInstitution deniedPTAB · Sep 12, 2025 · IPR2025-00833 · APJ Coke Morgan Stewart · IPR · Director review
The Director denied institution under § 314(a), finding discretionary denial appropriate based on a holistic assessment that included settled expectations and the prosecution search.
RulingsDirector review decision- Settled expectationsDecided for patent owner
“Other considerations favor discretionary denial. In particular, the challenged patent has been in force for nine years creating strong settled expectations for Patent Owner. DD Req. 2. Patent Owner provides evidence that the invention was commercialized at least seven years ago and is still on the market. Id. at 3; Ex. 2001; Ex. 2006. Patent Owner also provides evidence of patent marking of the commercialized product. DD Req. 3–4; Ex. 2001, 2. Finally, Patent Owner provides evidence that Petitioner has been aware of the challenged patent since at least 2022, showing where Petitioner cited the challenged patent in an unrelated inter partes review and an information disclosure statement. DD Req. 4.” slip op. at 2
- Other 314aInstitution denied discretionary otherInstitution denied
“Petitioner argues that the Examiner erred during prosecution by performing an incomplete search after being reversed on appeal. DD Opp. 22–23. In particular, Petitioner argues that the search was based on the Examiner’s prior claim construction and not the Board’s claim construction decided on appeal. Id. Thus, according to Petitioner, the Examiner should have performed “a targeted prior art search for bags made of a ‘flexible material’ consistent with the Board’s interpretation.” Id. (citing Ex. 1003, 19–20). This argument is unconvincing as the evidence of record indicates that the Examiner did perform a search for flexible bags and Petitioner does not sufficiently address why this search was inadequate. Ex. 1003, 20. 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
Discretionary denialPatents in suitUS 9,266,697 - Samsung Electronics Co. Ltd. / Samsung Electronics America, Inc. v. VB Assets, LLCInstitution deniedPTAB · Sep 12, 2025 · IPR2025-00868 · APJ Kalyan K Deshpande · IPR · Director review
The Director granted Patent Owner’s discretionary-denial requests and denied the petitions under § 314(a), instituting no trial based on the holistic assessment of the record.
RulingsDirector review decision- Settled expectationsDecided for patent owner
“Other considerations, however, weigh in favor of discretionary denial. In particular, each of the challenged patents has been in force for more than ten years, creating strong settled expectations for Patent Owner. Additionally, the patents challenged in IPR2025-00866, IPR2025-00867,” slip op. at 2
- Other 314aInstitution denied settled expectationsInstitution 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 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 8,515,765 - Samsung Electronics Co. Ltd. / Samsung Electronics America, Inc. v. VB Assets, LLCInstitution deniedPTAB · Sep 12, 2025 · IPR2025-00867 · APJ Kalyan K Deshpande · IPR · Director review
The Director denied institution under § 314(a), citing settled expectations and prior adjudications of the challenged patents.
RulingsDirector review decision- Settled expectationsInstitution denied settled expectationsDecided for patent owner
“Other considerations, however, weigh in favor of discretionary denial. In particular, each of the challenged patents has been in force for more than ten years, creating strong settled expectations for Patent Owner. Additionally, the patents challenged in IPR2025-00866, IPR2025-00867,” slip op. at 2
- Other 314aInstitution denied discretionary otherInstitution denied
“and IPR2025-00869 have all been subject to previous adjudications. The patents challenged in IPR2025-00866, IPR2025-00867, and IPR2025-00869 were involved in prior Board proceedings. In those proceedings, the Board denied institution of two petitions and entered a final written decision finding the challenged claims not unpatentable in the third proceeding. DD Req. 12; see also IPR2025-00867, Paper 8, 11–12; IPR2025-00869, Paper 8, 12. The patents challenged in IPR2025-00866 and IPR2025-00867 were also subject to a prior district court proceeding, in which the patents were found not invalid. DD Req. 12; IPR2025-00867, Paper 8, 12. It is not an efficient use of Board resources to further consider petitions challenging patents that have already been subject to challenges before the Office or patents that already have had validity adjudicated either at the Board or in another tribunal. 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 7,818,176 - Murata Manufacturing Co., Ltd v. Georgia Tech Research CorporationInstitution deniedPTAB · Jul 29, 2025 · IPR2025-00384 · APJ Coke Morgan Stewart · IPR · Director review
The Director granted Patent Owner’s discretionary-denial request and denied institution under § 314(a), finding the patent’s age and Petitioner’s long-standing awareness favored denial.
RulingsDirector review decision- Settled expectationsInstitution denied settled expectationsDecided for patent owner
“Other factors, however, weigh in favor of discretionary denial. In particular, the challenged patent has been in force for more than 16 years, creating strong settled expectations for Patent Owner. Additionally, Petitioner and Patent Owner had discussions in 2007 regarding the technology space involving the challenged patent. See, e.g., DD Opp. 21– 26. Therefore, Petitioner was aware that Patent Owner was involved in the same technology space for a significant amount of time before filing its 1 Citations are to papers in IPR2025-00383. The parties filed similar papers in IPR2025-00384. Petition challenging Patent Owner’s patent. A failure to seek early review of the patent favors denial and outweighs the above-discussed considerations.” 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 7,489,914 - Cambridge Mobile Telematics, Inc. v. Sfara, Inc.Institution deniedPTAB · Dec 13, 2024 · IPR2024-00952 · APJ Brent M Dougal · IPR · Institution
The Board denied institution on claims 1–18 because the Petition failed to satisfy 37 C.F.R. § 42.104(b)(3) by omitting required claim-construction analysis.
RulingsInstitution decision- BurdenDenied
“Under these facts we determine that 37 C.F.R. § 42.104(b)(3) mandates that the Petition “identify the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function.” The Petition failed to do so. At a minimum, the Petition should have explained why the plain and ordinary meaning of the “component” terms should apply in this proceeding (why the inconsistent positions are warranted) or set forth an alternative means-plus-function claim construction. CTPG 45.” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied
“Under these facts we determine that 37 C.F.R. § 42.104(b)(3) mandates that the Petition “identify the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function.” The Petition failed to do so. At a minimum, the Petition should have explained why the plain and ordinary meaning of the “component” terms should apply in this proceeding (why the inconsistent positions are warranted) or set forth an alternative means-plus-function claim construction. CTPG 45.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Under these facts we determine that 37 C.F.R. § 42.104(b)(3) mandates that the Petition “identify the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function.” The Petition failed to do so. At a minimum, the Petition should have explained why the plain and ordinary meaning of the “component” terms should apply in this proceeding (why the inconsistent positions are warranted) or set forth an alternative means-plus-function claim construction. CTPG 45.” slip op. at 8
Claim constructionDiscretionary denialcites MarkmanPatents in suitUS 8,989,952 - College Products, Inc. v. Intirion CorporationInstitution deniedPTAB · Dec 7, 2023 · IPR2023-01043 · APJ Matthew S Meyers · IPR · Institution
The Board denied institution because the petitioner’s earlier Iowa declaratory judgment action challenging the patents triggered the § 315(a)(1) bar.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied
“II. DISCUSSION A. Legal Standards Section 315(a)(1) of 35 U.S.C. states that “[a]n inter partes review may not be instituted if, before the date on which the petition for such a review is filed, the petitioner or real party in interest filed a civil action challenging the validity of a claim of the patent.” Section 315(a)(3) states that “[a] counterclaim challenging the validity of a claim of a patent does not constitute a civil action challenging the validity of a claim of a patent for purposes of this subsection [section 315(a)].”” slip op. at 3
- BurdenDecided for patent owner
“their declaratory judgment action included counterclaims to infringement allegations under § 315(a)(3) because the declaratory judgment complaint was filed after and in response to infringement allegations. Avigilon, Paper 11, 10. The Board determined that “a counterclaim typically is asserted in an existing civil action, in contrast to a complaint, the filing of which begins a civil action.” Id. (citing Fed. R. Civ. P. 13 (defining counterclaims as distinct from pleadings, including a complaint, set forth in Fed. R. Civ. P. 7); Fed. R. Civ. P. 3 (“A civil action is commenced by filing a complaint with the court.”)). The Board also noted the definition of “counterclaim” as “a defendant’s claim in opposition to or as a setoff against the plaintiff’s claim.” Id. at 11 (citing Black’s Law Dictionary (10th ed. 2014)).” slip op. at 9
Discretionary denialPatents in suitUS 10,495,374
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.