- Biocon Biologics, Inc. / Biocon Biologics Limited v. Regeneron Pharmaceuticals, Inc.Institution deniedPTAB · Sep 24, 2026 · PGR2026-00039 · APJ John A Squires · PGR · Director review
The Director denied the petition and instituted no trial because it was filed more than nine months after the patent issued, contrary to § 321(c).
RulingsDirector review decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barDenied
“I agree with Patent Owner that the Petition is barred by § 321(c). Section 321(c) provides that “[a] petition for a post-grant review may only be filed not later than the date that is 9 months after the date of the grant of the patent or of the issuance of a reissue patent (as the case may be).” Joinder is authorized under 35 U.S.C. § 325(c), which provides that “[i]f more than 1 petition for a post-grant review under this chapter is properly filed against the same patent and the Director determines that more than 1 of these petitions warrants the institution of a post-grant review under section 324, the Director may consolidate such reviews into a single post-grant review.” Notably, the statutory authorization for joinder under § 325(c) does not provide an exception to the nine-month statutory bar, as it requires any petition considered for joinder to be “properly filed,” i.e., to meet the statutory filing requirements including the nine-month filing deadline recited in § 321(c). Petitioner argues that I have broad discretion to promulgate rules and permit exceptions, such as here where institution would increase efficiency. See Reply 2–3. I agree that my institution discretion is broad. But § 325(c) provides no exception to the time period in which a petition for post-grant review may be filed.1 The board rule on which Petitioner relies cannot override a clear statutory requirement, and Petitioner does not point” slip op. at 3
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“Section 321(c) provides that “[a] petition for a post-grant review may only be filed not later than the date that is 9 months after the date of the grant of the patent or of the issuance of a reissue patent (as the case may be).” Joinder is authorized under 35 U.S.C. § 325(c), which provides that “[i]f more than 1 petition for a post-grant review under this chapter is properly filed against the same patent and the Director determines that more than 1 of these petitions warrants the institution of a post-grant review under section 324, the Director may consolidate such reviews into a single post-grant review.” Notably, the statutory authorization for joinder under § 325(c) does not provide an exception to the nine-month statutory bar, as it requires any petition considered for joinder to be “properly filed,” i.e., to meet the statutory filing requirements including the nine-month filing deadline recited in § 321(c). Petitioner argues that I have broad discretion to promulgate rules and permit exceptions, such as here where institution would increase efficiency. See Reply 2–3. I agree that my institution discretion is broad. But § 325(c) provides no exception to the time period in which a petition for post-grant review may be filed.1 The board rule on which Petitioner relies cannot override a clear statutory requirement, and Petitioner does not point 1 Although the Office continues to encourage joinder and early challenges to increase efficiency and resolve patentability challenges early in the life of the patent, these considerations must follow the statute.” slip op. at 3
Discretionary denialPatents in suitUS 12,168,036 - Microsoft Corporation v. Sandpiper CDN, LLCInstitution deniedPTAB · May 15, 2026 · IPR2026-00190 · APJ John A Squires · IPR · Director review
The Director denied institution of Microsoft’s IPR petition based on settled expectations and § 325(d), finding no material Office error in its consideration of the prior art.
RulingsDirector review decision- Settled expectationsInstitution denied settled expectationsDenied
“challenged patent has been in “force for over nine years.” DD Req. 10. Patent Owner argues that, over that time period, it developed settled expectations that the patent is valid and enforceable. See Dabico Airport Sols. Inc. v. Axa Power Aps, IPR2025-00408, Paper 21 at 2–3 (Director June 18, 2025). Patent Owner’s settled expectations favor discretionary denial.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“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.” Advanced Bionics, Paper 6 at 9; see Ecto World, LLC v. RAI Strategic Holdings, Inc., IPR2024-01280, Paper 13 at 6 (Director May 19, 2025) (precedential) (“Ecto World”). Petitioner’s argument is a general disagreement with the patent examiner’s position and does not set forth an error material to the patentability of the challenged claims. slip op. at 3
Discretionary denialPatents in suitUS 9,456,053 - Google LLC v. Soundclear Technologies LLCInstitution deniedPTAB · Mar 17, 2026 · IPR2025-01597 · APJ John A Squires · IPR · Institution
The Director denied Google’s petition for IPR of claims 1–5 because Google filed it after the § 315(b) deadline and showed no exceptional circumstances.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barInstitution denied
“is acknowledged. Google’s statutory deadline to file a proceeding, however, expired on July 31, 2025, one year after service of the complaint in the parallel litigation between Google and SoundClear Technologies LLC. See Pet. 75. Accordingly, Google’s Petition was filed more than one year after the date on which it was served with a complaint alleging infringement of the ’337 patent and Google is time-barred from filing a petition under § 315(b). “Petitions filed by time-barred parties should proceed only in exceptional circumstances.” Realtek Semiconductor Corp. v. ParkerVision, Inc., IPR2025-00324, Paper 11 (June 25, 2025) (designated precedential January 9, 2026). Google does not present an exceptional circumstance here beyond its goal of judicial efficiency. Judicial efficiency, however, absent other considerations, does not qualify as an exceptional circumstance that would justify institution and joinder of a time-barred party. The better course in a situation like this would have been for Google to file the petition and motion for joinder before the statutory time bar. Here, the Amazon IPR was filed in January 2025, giving Google ample time to file the petition and joinder motion. Parties do not have to wait to request joinder until the case they are seeking to join is instituted. Accordingly, the Petition is denied under 35 U.S.C. § 314(a).” slip op. at 2
Discretionary denialPatents in suitUS 11,069,337 - Ascentcare Dental Products, Inc. v. Solmetex, LLCInstitution deniedPTAB · Oct 17, 2025 · PGR2025-00058 · APJ Coke Morgan Stewart · PGR · Director review
The Director granted Patent Owner’s discretionary-denial requests and denied the Petitions under §§ 314(a) and 325(d), declining to institute trial based on the prior presentation of the art and lack of material error.
RulingsDirector review decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“particular, Patent Owner persuasively demonstrates that Petitioner relies on references that were considered by the patent examiner during prosecution of the challenged patents or cited by the Patent Owner during prosecution. DD Req. 4–6. Petitioner does not address 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 1 Citations are to papers in IPR2025-01065. The parties filed similar papers in PGR2025-00058. 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 material error. DD Opp. 6– 10. “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 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) 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 12,167,948 - Ascentcare Dental Products, Inc. v. Solmetex, LLCInstitution deniedPTAB · Oct 17, 2025 · IPR2025-01065 · APJ Coke Morgan Stewart · IPR · Director review
The Director denied institution of the IPR because the petition relied on art previously presented to the Office and did not show material error in its evaluation.
RulingsDirector review decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“particular, Patent Owner persuasively demonstrates that Petitioner relies on references that were considered by the patent examiner during prosecution of the challenged patents or cited by the Patent Owner during prosecution. DD Req. 4–6. Petitioner does not address 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 1 Citations are to papers in IPR2025-01065. The parties filed similar papers in PGR2025-00058. 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 material error. DD Opp. 6– 10. “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 otherInstitution denied
“Although the parties are engaged in a parallel proceeding involving 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 January 1, 2027. DD Opp. 11. 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. 17. As such, these considerations neither favor nor counsel against discretionary denial. Other considerations, however, favor discretionary denial. In” slip op. at 2
Discretionary denialPatents in suitUS 11,826,217 - 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 - 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 - 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 - Google LLC v. Advanced Coding Technologies LLCInstitution deniedPTAB · Oct 10, 2025 · IPR2025-00999 · APJ Kalyan K Deshpande · IPR · Director review
The Director denied institution under § 314(a), finding that district court trial would likely precede the final written decision, settled expectations favored denial, and prosecution-error arguments were unpersuasive.
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 / argumentsInstitution denied 325dDenied
“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 denialInstitution 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 9,986,303
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.