- Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Truesight Communications LLCInstitution deniedPTAB · Apr 21, 2025 · IPR2024-01477 · APJ Bach V Hoang · IPR · Institution
The Board denied institution of IPR on claims 1–14 under § 314(a), finding that the Fintiv factors favoring denial outweighed the stipulation against denial.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“Statutory Deadline We weigh this factor as favoring the exercise of discretionary denial. The parties agree that the projected statutory deadline for issuing our Final Written Decision (April 23, 2026) is a little more than six months after trial is currently scheduled in the District Court litigation (October 6, 2025). Supp. Br. 4; Prelim. Resp. 19–20. Because the currently scheduled District Court trial is set to begin six months before our deadline to reach a final decision, this factor favors discretionary denial in this case. See Fintiv, Paper 11 at 9. C. Factor 3 – Investment in the Parallel Proceeding We weigh this factor as favoring the exercise of discretionary denial. Showing substantial investment in the District Court litigation, document production is substantially complete and fact discovery will be completed within two weeks of this Decision on Institution. Ex. 2001, 4–5 (Second Amended Docket Control Order). Further, a hearing on claim construction and associated briefing is complete. Id. And, the deadline to serve Institution. Id. at 4. These actions show that there has been notable investment by the parties in the District Court litigation. Furthermore, we must consider this parallel work in relation to the October 6, 2025 District Court litigation trial date, which is six months before the projected statutory deadline of our Final Written Decision. See Fintiv, Paper 11 at 10. As work in the District Court litigation has moved beyond preliminary stages into more advanced stages, instituting at this time implicates at least some duplicative costs. See id. On the matter of petition timing, it is often reasonable for a petitioner to wait to file its petition until it learns which claims are being asserted against it in the parallel proceeding. Fintiv, Paper 11 at 11. Here, Petitioner filed its petition on September 27, 2024, which is four months after receiving Patent Owner’s May 29, 2024 disclosure of asserted claims and infringement contentions and nine months after it was served Patent Owner’s December 29, 2023 infringement complaint. Ex. 1017; Ex. 1018, 1. Further, Petitioner served its amended invalidity contentions in the District Court litigation on December 17, 2024, i.e., after it filed its Petition.5 We do not find the timing of the Petition in this case to outweigh the significant investment in the District Court litigation. Considering the substantial investment in the District Court litigation and the rapidly advancing District Court litigation trial date balanced against the timing of the Petition, we determine this factor weighs in favor of discretionary denial.” slip op. at 11
Discretionary denialPatents in suitUS 8,898,803 - Commscope, Inc. v. TQ Delta, LLC.Institution deniedPTAB · Apr 25, 2023 · IPR2023-00068 · APJ Lynne E Pettigrew · IPR · Institution
The Board denied institution of review of claims 9–16 as time-barred under § 315(b), and denied CommScope’s motion for joinder as moot.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barInstitution denied
“instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.”” slip op. at 4
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“The ’664 IPR, however, has been terminated. Nokia of Am. Corp. v. TQ Delta, LLC, IPR2022-00664, Paper 24 at 3 (PTAB Dec. 8, 2022). Thus, there no longer is a pending proceeding in the ’664 IPR for Petitioner to join. As a result, Petitioner’s request to join the ’664 IPR is moot, and the Petition is not timely under 35 U.S.C. § 315(b). IV. CONCLUSION The Motion for Joinder is denied as moot because the ’664 IPR already has been terminated, and the Petition is denied because it was not filed within the time period set forth in 35 U.S.C. § 315(b). V. ORDER Accordingly, it is ORDERED that the Motion for Joinder is denied as moot; and” slip op. at 5
Discretionary denialPatents in suitUS 7,844,882 - Commscope, Inc. v. TQ Delta, LLCInstitution deniedPTAB · Apr 25, 2023 · IPR2023-00064 · APJ Robert J Weinschenk · IPR · Institution
The Board denied institution of review of claims 1–4 as time-barred under § 315(b) and denied joinder as moot because the proceeding to be joined had terminated.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barDenied
“petitioner is served with a complaint alleging infringement of the patent.” Patent Owner served 2Wire, Inc. (“2Wire”), a privy of Petitioner,1 with a complaint alleging infringement of the ’048 patent in February 2014. Ex. 2001; Ex. 2002. Patent Owner served Petitioner with a complaint alleging infringement of the ’048 patent on August 17, 2021. Ex. 1027; Ex. 3001. Petitioner filed the Petition more than one year later on October 26, 2022. Pet. 79. Petitioner does not dispute those facts, but instead relies on its request to join the ’666 IPR to avoid the time limit in Section 315(b). Pet. 1 (“Because . . . this is a copycat petition . . . accompanied by a motion for joinder . . . , the time bar under § 315(b) does not apply.”); Mot. 8–10 (“the one-year time limitation does not apply to a request for joinder”). The ’666 IPR, however, has been terminated. Nokia of Am. Corp. v. TQ Delta, LLC, IPR2022-00666, Paper 23 at 3 (PTAB Dec. 8, 2022). Thus, there no longer is a pending proceeding in the ’666 IPR for Petitioner to join. As a result, Petitioner’s request to join the ’666 IPR is moot, and the Petition is not timely under Section 315(b).” slip op. at 5
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“The ’666 IPR, however, has been terminated. Nokia of Am. Corp. v. TQ Delta, LLC, IPR2022-00666, Paper 23 at 3 (PTAB Dec. 8, 2022). Thus, there no longer is a pending proceeding in the ’666 IPR for Petitioner to join. As a result, Petitioner’s request to join the ’666 IPR is moot, and the Petition is not timely under Section 315(b). III. CONCLUSION The Motion for Joinder is denied as moot because the ’666 IPR” slip op. at 5
Discretionary denialPatents in suitUS 8,276,048 - Commscope, Inc. v. TQ Delta, LLCInstitution deniedPTAB · Apr 25, 2023 · IPR2023-00066 · APJ Robert J Weinschenk · IPR · Institution
The Board denied institution of IPR on claims 1–8 as time-barred under § 315(b), and denied joinder as moot because the proceeding sought to be joined had terminated.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barDenied
“petitioner is served with a complaint alleging infringement of the patent.” Patent Owner served 2Wire, Inc. (“2Wire”), a privy of Petitioner,1 with a complaint alleging infringement of the ’381 patent in February 2014. Ex. 2001; Ex. 2002. Petitioner filed the Petition more than one year later on November 1, 2022. Pet. 79. Petitioner does not dispute those facts, but instead relies on its request to join the ’665 IPR to avoid the time limit in Section 315(b). Pet. 1 (“Because . . . CommScope will file an accompanying motion for joinder . . . , the time bar under § 315(b) does not apply.”); Mot. 8–10 (“the one-year time limitation does not apply to a request for joinder”). The ’665 IPR, however, has been terminated. Nokia of Am. Corp. v. TQ Delta, LLC, IPR2022-00665, Paper 23 at 3 (PTAB Dec. 8, 2022). Thus, there no longer is a pending proceeding in the ’665 IPR for Petitioner to join. As a result, Petitioner’s request to join the ’665 IPR is moot, and the Petition is not timely under Section 315(b).” slip op. at 5
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“The ’665 IPR, however, has been terminated. Nokia of Am. Corp. v. TQ Delta, LLC, IPR2022-00665, Paper 23 at 3 (PTAB Dec. 8, 2022). Thus, there no longer is a pending proceeding in the ’665 IPR for Petitioner to join. As a result, Petitioner’s request to join the ’665 IPR is moot, and the Petition is not timely under Section 315(b).” slip op. at 5
Discretionary denialPatents in suitUS 7,836,381 - Commscope, Inc. v. TQ Delta, LLCInstitution deniedPTAB · Dec 19, 2022 · IPR2022-01443 · APJ Karl D Easthom · IPR · Institution
The Board denied institution because CommScope’s petition was time-barred under § 315(b), and denied joinder because the IPR it sought to join had been terminated.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barDenied
“Further, we effectively maintain the Board’s holding that CommScope’s first petition remains time-barred. For the same reasons, the Petition in this proceeding is also time-barred, and institution is denied. See IPR2022-00352, Paper 13.” slip op. at 4
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“In this proceeding, Petitioner relies on its request to join the ’471 IPR to avoid the time bar in § 315(b). Pet. 68 (“[B]ecause CommScope will file a motion for joinder with the Nokia IPR, the time-bar set forth in 35 U.S.C. § 315(b) does not apply to this petition.”). However, the Board terminated the ’471 IPR based on settlement between the parties, noting the Board’s policy goal of fostering settlements. IPR2022-00471, Paper 41. There is no pending proceeding in the ’471 IPR for Petitioner to join. As a result, Petitioner’s request to join the ’471 IPR is denied.” slip op. at 3
Discretionary denialPatents in suitUS 8,462,835 - NXP USA, Inc. v. Impinj, Inc.Rehearing deniedPTAB · Aug 25, 2022 · PGR2022-00005 · APJ Ken B Barrett · PGR · Rehearing
The Board denied NXP’s rehearing request, leaving in place the denial of PGR institution on claims 1–20 based on its holistic Fintiv analysis.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“decision should be modified. 37 C.F.R. § 42.71(d). “The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id. When rehearing a decision on a petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). “An abuse of discretion may be indicated if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors.” Huawei Device Co., Ltd., v. Optis Cellular Tech., LLC, IPR2018-00816, Paper 19, 3 (PTAB Jan. 8, 2019) (precedential) (citations omitted). Further, “[a]bsent a showing of ‘good cause’ . . . , new evidence will not be admitted” in connection with a request for rehearing. Patent Trial and Appeal Board Consolidated Trial Practice Guide 90 (Nov. 2019), https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf (citing Huawei Device Co., IPR2018-00816, Paper 19 at 4). Thus, a request for rehearing is not generally an opportunity to present new arguments or evidence.” slip op. at 3
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Denied
“with the Request. “Ideally, a party seeking to admit new evidence with a rehearing request would request a conference call with the Board prior to filing such a request so that it could argue ‘good cause’ exists for admitting the new evidence. Alternatively, a party may argue ‘good cause’ exists in the rehearing request itself.” Huawei Device Co., IPR2018-00816, Paper 19 at 4; see also Consolidated Trial Practice Guide at 90 (quoting the same). Petitioner did not request a conference call prior to filing the Request to argue that good cause exists and does not present arguments in the Request regarding good cause. Accordingly, we find that Petitioner has not met its burden of showing that good cause exists to justify consideration of those exhibits to evaluate whether we erred by overlooking or misapprehending anything in the Decision. B. We Did Not Misapprehend the Significance of the Facts Pertaining to” slip op. at 4
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for patent owner
“argument, we stated that, “[b]ecause the currently scheduled trial in the parallel proceeding is scheduled to begin over two months before our deadline to reach a final decision, this factor weighs somewhat in favor of discretionary denial.” Dec. 9. After discussing all of the Fintiv factors and after “consider[ing] ‘a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review,’” we exercised discretion to deny institution of a post-grant review. Id. at 12–13 (quoting Fintiv, Paper 11 at 6).” slip op. at 6
Discretionary denialPatents in suitUS 10,929,734 - Commscope, Inc. v. TQ Delta, LLCInstitution deniedPTAB · Aug 19, 2022 · IPR2022-00352 · APJ Joni Y Chang · IPR · Institution
The Board denied institution on all challenged claims because time-barred 2Wire was an RPI and was in privity with CommScope under § 315(b).
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barDenied
“It is undisputed that 2Wire is time-barred under § 315(b) because 2Wire was served with a complaint alleging infringement of the ’835 patent 12 on February 7, 2014, more than one year before December 31, 2021, the filing date of the Petition. Pet. 65; Ex. 1034; Prelim. Resp. 12. CommScope identifies ARRIS Solutions as an RPI to this IPR proceeding and confirms that “2Wire, Inc. was merged into ARRIS Solutions, Inc.” Paper 7, 2. Indeed, 2Wire’s Amended Corporate Disclosure Statement filed in the Delaware case indicates that “the undersigned counsel of record for 2Wire, Inc. certifies that 2Wire, Inc. has been merged to form ARRIS Solutions, Inc.” and that “[t]his name change is the result of a merger . . . that became effective January 1, 2017.” Ex. 2009, 1. Moreover, CommScope acknowledges that 2Wire is “CommScope’s predecessor-in-interest in the District of Delaware,” and that “[o]n April 4, 2019, CommScope Holding Company, Inc.[, an RPI identified by Petitioner,] acquired the successor-ininterest of 2 Wire.” Ex. 2035, 5; Pet. 64. In sum, CommScope identifies ARRIS Solutions as an RPI in this IPR proceeding and 2Wire merged with ARRIS Solutions. As a result, we are persuaded that 2Wire is an RPI in this IPR proceeding. Accordingly, the Petition is time-barred under § 315(b). See Power Integrations, Inc., 926 F.3d at 1310, 1318 (holding that the IPR Petition was time-barred under § 315(b) because time-barred entity Fairchild, which had merged with the petitioner, was an RPI at the time of institution).” slip op. at 12
- PTAB / AIA Trials › Real party in interest / privityDecided for patent owner
“on February 7, 2014, more than one year before December 31, 2021, the filing date of the Petition. Pet. 65; Ex. 1034; Prelim. Resp. 12. CommScope identifies ARRIS Solutions as an RPI to this IPR proceeding and confirms that “2Wire, Inc. was merged into ARRIS Solutions, Inc.” Paper 7, 2. Indeed, 2Wire’s Amended Corporate Disclosure Statement filed in the Delaware case indicates that “the undersigned counsel of record for 2Wire, Inc. certifies that 2Wire, Inc. has been merged to form ARRIS Solutions, Inc.” and that “[t]his name change is the result of a merger . . . that became effective January 1, 2017.” Ex. 2009, 1. Moreover, CommScope acknowledges that 2Wire is “CommScope’s predecessor-in-interest in the District of Delaware,” and that “[o]n April 4, 2019, CommScope Holding Company, Inc.[, an RPI identified by Petitioner,] acquired the successor-ininterest of 2 Wire.” Ex. 2035, 5; Pet. 64. In sum, CommScope identifies ARRIS Solutions as an RPI in this IPR proceeding and 2Wire merged with ARRIS Solutions. As a result, we are persuaded that 2Wire is an RPI in this IPR proceeding. Accordingly, the Petition is time-barred under § 315(b). See Power Integrations, Inc., 926 F.3d at 1310, 1318 (holding that the IPR Petition was time-barred under § 315(b) because time-barred entity Fairchild, which had merged with the petitioner, was an RPI at the time of institution).” slip op. at 13
Discretionary denialPatents in suitUS 8,462,835 - PTAB · May 19, 2022 · IPR2022-00239 · APJ John A Hudalla · IPR · Institution
The Board denied institution for claims 1–20 under § 314(a), finding the advanced parallel litigation posture favored discretionary denial under Fintiv.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“acted upon Patent Owner’s request to modify the schedule. As such, we consider this factor with the trial being set for November 7, 2022. See Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 15 at 13 (May 13, 2020) (informative) (“We generally take courts’ trial schedules at face value absent some strong evidence to the contrary.”). This is over six months before the expected date of our final written decision. Thus, we find that the second Fintiv factor favors exercising authority to deny institution.” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“demonstrating that the challenged claims are invalid.” Pet. 79; see also Pet. Reply 3 (similar argument). Patent Owner argues that the Petition is deficient based on its arguments against the merits of the Petition. Prelim. Resp. 10. Based on the preliminary record, the merits of Petitioner’s asserted grounds seem to meet the “reasonable likelihood” standard for institution. Thus, we determine that the sixth Fintiv factor is neutral.” slip op. at 13
Discretionary denialPatents in suitUS 8,248,940 - PTAB · May 19, 2022 · IPR2022-00238 · APJ John A Hudalla · IPR · Institution
The Board denied institution for claims 1–17 under § 314(a), finding the advanced posture of the parallel litigation outweighed countervailing factors under Fintiv.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied fintivInstitution denied
“review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons that follow, we exercise our discretion to deny institution of an inter partes review under 35 U.S.C. § 314(a).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“advanced . . . and instituting would lead to duplicative costs” with respect to invalidity/unpatentability. Fintiv, Paper 11 at 10. Accordingly, we find that the advanced state of expert discovery regarding invalidity favors exercising discretion to deny institution.” slip op. at 10
Discretionary denialPatents in suitUS 7,548,945 - NXP USA, Inc. v. Impinj, Inc.Institution deniedPTAB · May 2, 2022 · PGR2022-00005 · APJ Ken B Barrett · PGR · Institution
The Board denied institution under Fintiv because the parallel district court case was advanced, scheduled for trial earlier, and substantially overlapped with the petition.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“decision in this proceeding, if institution were granted, would be May 2023, over two months after the currently scheduled trial date. “We generally take courts’ trial schedules at face value absent some strong evidence to the contrary.” Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 15, 13 (PTAB May 13, 2020) (informative) (“Fintiv II”). “If the court’s trial date is earlier than the projected statutory deadline, the Board generally has weighed this fact in favor of exercising authority to deny institution.” Fintiv, Paper 11 at 9. Because the currently scheduled trial in the parallel proceeding is scheduled to begin over two months before our deadline to reach a final decision, this factor weighs somewhat in favor of discretionary denial. See Fintiv II, Paper 15 at 13.” slip op. at 9
Discretionary denialPatents in suitUS 10,929,734
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.