- PTAB · Jul 16, 2025 · IPR2025-00467 · APJ Coke Morgan Stewart · IPR · Director review
The Director granted Patent Owner’s discretionary-denial request and denied institution of IPR2025-00467 under § 314(a), citing multiple prior proceedings and no persuasive reason to use Board resources.
RulingsDirector review decision- Settled expectationsInstitution denied settled expectationsGranted
“Some factors counsel against discretionary denial. For example, the challenged patents have not been in force for a significant period of time (issued in 2019, 2021, 2022, and 2023), such that the Patent Owner has not developed strong settled expectations. Other factors, however, weigh in favor of discretionary denial. In particular, despite that the patents were issued relatively recently, they have already been the subject of multiple proceedings. For example, the patent challenged in IPR2025-00467 was also the subject of IPR2024-00045 (final written decision issued on April 14, 2025), IPR2024-00903 (joined to IPR2024-00045), IPR2024-00514 (discretionary denial of institution), and an ITC investigation.2 The Board has issued final written decisions addressing almost all of the claims challenged by Petitioner in these proceedings. See, e.g., Aylo Freesites Ltd. v. Dish Techs. LLC, IPR2024- 1 Citations are to the papers in IPR2025-00467. Similar papers can be found in IPR2025-00468, IPR2025-00469, and IPR2025-00470. 2 The respondents in the ITC proceeding do not include Petitioner, but the ITC investigation addressed the patent challenged in IPR2025-00467. 00045, Paper 59 at 3 (PTAB April 14, 2025) (holding unpatentable claims 1–3, 5, 16–20, 22, 26–28, and 30 and holding not unpatentable claims 4, 7, 8, 10–14, and 23–25 of the patent challenged in IPR2025-00467). Petitioner does not provide persuasive reasoning why an inter partes review is an appropriate use of Board resources under these circumstances. In view of the number of prior proceedings involving the challenged patents and in the absence of a persuasive reason from Petitioner, these circumstances 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 Petitions are 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 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 10,469,554 - SAP America, Inc. v. Valtrus Innovations Ltd.Institution deniedPTAB · Jul 10, 2025 · IPR2025-00417 · 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 review.
RulingsDirector review decision- Settled expectationsGranted
“proceedings has been dismissed from the parallel district court proceeding with prejudice. See, e.g., IPR2025-00415, Paper 8, 2–3. As Patent Owner asserts, it is an inefficient use of Board resources to review these challenged patents that have been dismissed from the litigation. See id. In addition, the challenged patents in IPR2025-00415, IPR2025-00417, and IPR2025-00418 have been in force for approximately 20 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). These circumstances tip the balance in favor of discretionary denial.” slip op. at 3
- Other 314aInstitution denied discretionary otherInstitution denied
“proceedings has been dismissed from the parallel district court proceeding with prejudice. See, e.g., IPR2025-00415, Paper 8, 2–3. As Patent Owner asserts, it is an inefficient use of Board resources to review these challenged patents that have been dismissed from the litigation. See id. In addition, the challenged patents in IPR2025-00415, IPR2025-00417, and IPR2025-00418 have been in force for approximately 20 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). These circumstances tip the balance in favor of 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 Petitions are denied under 35 U.S.C. § 314(a).” slip op. at 3
Discretionary denialPatents in suitUS 6,823,409 - Cambridge Industries USA, Inc. v. Applied Optoelectronics, Inc.Institution deniedPTAB · Jun 27, 2025 · IPR2025-00433 · APJ Coke Morgan Stewart · IPR · Director review
The Director granted Patent Owner’s discretionary denial request and denied institution of IPR2025-00433 based on a holistic assessment, including stronger settled expectations.
RulingsDirector review decision- Settled expectationsInstitution denied settled expectationsGranted
“Accordingly, Patent Owner’s settled expectations as to U.S. Patent No. 10,379,301 B2, U.S. Patent No. 10,313,024 B1, and U.S. Patent No. 10,788,690 B2 do not favor discretionary denial. The patents challenged in IPR2025-00433 and IPR2025-00435, however, have been in force for nine and seven years, respectively, and are not from the same patent family as those in IPR2025-00434, IPR2025- 00436, and IPR2025-00437. Accordingly, Patent Owner’s settled expectations as to the patents challenged in IPR2025-00433 and IPR2025- 00435 are stronger and discretionary denial is appropriate as to these proceedings.” slip op. at 3
- PTAB / AIA Trials › Discretionary denialInstitution denied discretionary otherInstitution denied
“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. In particular, Patent Owner and Petitioner are involved in a parallel district court proceeding in the Northern District of California. DD Req. 7– 9; DD Opp. 2. There is no currently scheduled trial date in the co-pending district court litigation. DD Opp. 7. The District Court further vacated the scheduled Markman hearing. DD Req. 9; DD Opp. 7. Although Patent Owner argues that discretionary denial is warranted because Petitioner is over-reliant on expert testimony, Patent Owner does not identify any portions of the expert testimony that suggest Petitioner is using its expert to fill gaps in the prior art. DD Req. 28–29; DD Opp. 10. Additionally, Patent Owner’s arguments for discretionary denial under 35 U.S.C. § 325(d) for some of the proceedings are unavailing and discretionary denial under § 325(d) is not appropriate. Furthermore, most of the challenged patents have not been in force for a significant period of time (issued in 2020, 2019, and 2019), and, accordingly, Patent Owner has not developed strong settled expectations that favor discretionary denial as to at least those patents.” slip op. at 2
Discretionary denialPatents in suitUS 9,523,826 - Intel Corporation v. Proxense LLCInstitution deniedPTAB · Jun 26, 2025 · IPR2025-00329 · APJ Coke Morgan Stewart · IPR · Director review
The Director granted Patent Owner’s request for discretionary denial and denied institution of IPR on the challenged patent.
RulingsDirector review decision- Settled expectationsInstitution denied settled expectationsGranted
“However, the considerations favoring discretionary denial outweigh those that counsel against it. In particular, the challenged patents have been in force over nine years, creating settled expectations, and Petitioner does not provide any persuasive reasoning why an inter partes review is an appropriate use of Board resources. Dabico Airport Solutions Inc. v. Axa Power Aps, IPR2025-00408, Paper 21 at 2–3 (Acting Director Stewart June 18, 2025). There may be persuasive reasons why the Board should review challenged claims several years after their issuance date. For example, a significant change in law may have occurred since the patent issued, and a petitioner can explain how that change in law directly bears on the patentability of the challenged claims. As another example, a patent may have been in force for years but may not have been commercialized, asserted, marked, licensed, or otherwise applied in a petitioner’s particular 1 Citations are to papers in IPR2025-00327. The parties filed similar papers in IPR2025-00328 and IPR2025-00329. technology space, if at all. These non-exclusive examples provide considerations that weigh against a patent owner’s claim of settled expectations and bears on the Director’s discretion. In the absence of any such information, however, such as in the present proceedings, the Office is disinclined to disturb the settled expectations of Patent Owner.” slip op. at 2
- Other 314aInstitution denied discretionary otherInstitution denied
“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 8,457,672 - Intel Corporation v. Proxense LLCInstitution deniedPTAB · Jun 26, 2025 · IPR2025-00327 · APJ Coke Morgan Stewart · IPR · Director review
The Director granted Patent Owner’s request for discretionary denial and denied institution under § 314(a), citing settled expectations and Petitioner’s lack of persuasive justification.
RulingsDirector review decision- Settled expectationsInstitution denied settled expectationsGranted
“those that counsel against it. In particular, the challenged patents have been in force over nine years, creating settled expectations, and Petitioner does not provide any persuasive reasoning why an inter partes review is an appropriate use of Board resources. Dabico Airport Solutions Inc. v. Axa Power Aps, IPR2025-00408, Paper 21 at 2–3 (Acting Director Stewart June 18, 2025). There may be persuasive reasons why the Board should review challenged claims several years after their issuance date. For example, a significant change in law may have occurred since the patent issued, and a petitioner can explain how that change in law directly bears on the patentability of the challenged claims. As another example, a patent may have been in force for years but may not have been commercialized, asserted, marked, licensed, or otherwise applied in a petitioner’s particular” slip op. at 2
- Other 314aInstitution denied discretionary otherInstitution denied
“However, the considerations favoring discretionary denial outweigh those that counsel against it. In particular, the challenged patents have been in force over nine years, creating settled expectations, and Petitioner does not provide any persuasive reasoning why an inter partes review is an appropriate use of Board resources. Dabico Airport Solutions Inc. v. Axa Power Aps, IPR2025-00408, Paper 21 at 2–3 (Acting Director Stewart June 18, 2025). There may be persuasive reasons why the Board should review challenged claims several years after their issuance date. For example, a significant change in law may have occurred since the patent issued, and a petitioner can explain how that change in law directly bears on the patentability of the challenged claims. As another example, a patent may have been in force for years but may not have been commercialized, asserted, marked, licensed, or otherwise applied in a petitioner’s particular” slip op. at 2
Discretionary denialPatents in suitUS 9,265,043
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