- Charter Communications, Inc. / Plume Design, Inc. v. Adaptive Spectrum And Signal Alignment, Inc.Institution deniedPTAB · May 22, 2025 · IPR2025-00088 · APJ Kevin C Trock · IPR · Institution
The Board denied institution of IPR on all challenged claims under § 314(a), finding the Fintiv factors favored discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“7. Conclusion on Discretionary Review When considering the Fintiv factors, we take “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Fintiv, Paper 11 at 6. Based on our review, we find that the factors weigh in favor of exercising discretion to deny institution of the Petition. The factors weighing in favor of exercising discretionary denial include the scheduling of the parallel proceeding’s trial date many months prior to the Board’s projected statutory deadline for a final written decision, the substantial investment by the parties and the District Court in the ASSIA Litigation, the recommended denial of the motion to transfer by the District Court, and the issues on the merits raised by the Patent Owner in its Preliminary Response and our preliminary consideration. In our view, these factors outweigh the other Fintiv factors, including the lack of a stay, Petitioner’s offer to limit overlap between the two proceedings via stipulation, and the presence of Plume Design as a Petitioner in this proceeding. We, therefore, are persuaded that the interests of the efficiency under 35 U.S.C. § 314(a) to deny institution of the Petition.” slip op. at 16
Discretionary denialPatents in suitUS 11,050,654 - Innolux Corporation v. Phenix Longhorn LLCInstitution deniedPTAB · May 15, 2025 · IPR2025-00043 · APJ Kevin F Turner · IPR · Institution
The Board denied institution of IPR challenging claims 1–5 and 8–14, exercising § 314(a) discretion under Fintiv based on the Texas litigation.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“We agree with Patent Owner that its asserted trial date of February 17, 2026, would likely occur approximately 4 months before the latest date on which a final decision can be issued in this proceeding (June 12, 2026), and that is the metric we should use to determine the proximity of trial date to the projected statutory deadline. Accordingly, the facts underlying this factor weigh in favor of denial.” slip op. at 9
Discretionary denialPatents in suitUS 7,233,305 - PTAB · Apr 28, 2025 · IPR2025-00013 · APJ Scott Raevsky · IPR · Institution
The Board denied institution of IPR on claims 1–23 under § 314(a), relying on the Fintiv factors and its holistic assessment of the parallel litigation and petition merits.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“the Petition under Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”). Prelim. Resp. 34–41. Fintiv identifies a non-exclusive list of factors we consider when addressing whether a related, parallel district court action provides a basis for discretionary denial under 35 U.S.C. § 314(a). Fintiv, Paper 11 at 5–16. These factors include: 1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits.” slip op. at 5
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Institution of inter partes review, however, is discretionary. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.”). For the reasons discussed below, we exercise discretion under 35 U.S.C. § 314(a) not to institute inter partes review.” slip op. at 2
Discretionary denialPatents in suitUS 11,770,313 - PTAB · Apr 28, 2025 · IPR2025-00012 · APJ Scott Raevsky · IPR · Institution
The Board denied institution of review of claims 1–25 under § 314(a), citing the parallel trial schedule, investment, transfer ruling, and not particularly strong merits.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. Id. at 5–6. We take “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review” when evaluating these factors. Id. at 6.” slip op. at 5
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Institution of inter partes review, however, is discretionary. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.”). For the reasons discussed below, we exercise discretion under 35 U.S.C. § 314(a) not to institute inter partes review.” slip op. at 2
Discretionary denialPatents in suitUS 10,848,398 - PTAB · Apr 17, 2025 · IPR2024-01379 · APJ Kevin C Trock · IPR · Institution
The Board denied institution of review of claim 20, finding that the Fintiv factors favored discretionary denial under § 314(a).
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“(which we address in more detail below) turns on the determination of the meaning of the claim term “periodically.” We note that the District Court has construed the term “periodically monitor” to mean “monitor at regular intervals of time.” See Sec. II.C below. Given this construction, which we preliminarily agree with at this stage, we cannot agree with Petitioner that the Petition presents “a strong case for obviousness.” Thus, we find that Factor 6 weighs in favor of exercising discretionary denial.” slip op. at 16
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“periodically” as it is used in claim 20, with Petitioner arguing that “periodically’ means “repeated . . . over time” and Patent Owner arguing that “periodically” means “at fixed intervals.” See Pet. 25; Prelim. Resp. 8. Our preliminary determination of the ordinary and customary meaning of the term “periodically” as it is used in claim 20 substantially impacts our view of the merits in this case as this issue is the principal one raised by Patent Owner in its Preliminary Response. See Prelim. Resp. 5–22. slip op. at 20
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner’s description of a person of ordinary skill appears consistent with the subject matter of the ’996 patent. This is supported by the testimony of Petitioner’s declarant, Dr. Martin. See Ex. 1002 ¶¶ 55–56. We adopt Petitioner’s assessment of a person of ordinary skill for purposes of this Decision, with the exception of the qualifier “at least,” to keep the description from being vague and extending to a level reflecting that of an expert. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). C. Claim Construction” slip op. at 18
Claim constructionDiscretionary denialcites Phillips · GrahamPatents in suitUS 7,809,996 - Ford Motor Company v. Versata Development Group, Inc.Rehearing deniedPTAB · Jul 6, 2017 · IPR2017-00151 · APJ James B Arpin · IPR · Rehearing
The Board denied Ford’s rehearing requests, leaving in place the denials of institution because the dismissals did not lift the § 315(b) time bar.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“[a] request for rehearing is not an opportunity merely to disagree with the panel’s assessment of the arguments or weighing of the evidence, or to present new arguments or evidence. It is not an abuse of discretion to have performed an analysis or reached a conclusion with which Petitioner disagrees, and mere disagreement with the Board’s analysis or conclusion is not a proper basis for rehearing. Sophos, Inc. v. Finjan, Inc., Case IPR2015-01022, slip op. at 3–4 (PTAB Jan. 28, 2016) (Paper 9).” slip op. at 13
- PTAB / AIA Trials › §315(b) time barDecided for patent owner
“to pursue courses of action available to them before the action had been brought.” Req. 7–8 (quoting Atlanta Gas, slip op. at 13). Unlike Atlanta Gas and the other cases cited by Petitioner, we are persuaded that, after the dismissal of the Versata action, the parties in the instant proceedings did not enjoy the restored ability to pursue courses of action available to them before the Versata action had been brought. The Ford action would remain the first action filed, so that a new action by Patent Owner filed in the U.S. District Court for the Eastern District of Texas would remain subject to the Eleventh Circuit’s first-to-file rule. See Merrill Lynch, Pierce, Fenner & Smith, Inc. v. Haydu, 675 F.2d 1169, 1174 (11th Cir. 1982) (“In the absence of compelling circumstances, the court initially seized of a controversy should be the one to decide the case.” (Emphasis added.)). Further, although the U.S. District Court for the Eastern District of Texas had asked the parties to provide any “good faith reasons” for maintaining the Versata action, Patent Owner responded that it did not oppose dismissal, and Petitioner chose not to respond. Dec. 7–8. Thus, on this record, we understand that either party could have argued to retain the Versata action, but that, after the dismissal, the parties no longer enjoyed the ability to bring this action in the U.S. District Court for the Eastern District of Texas.” slip op. at 9
- PTAB / AIA Trials › Real party in interest / privityNot reached
“Req. 11. As an initial matter, Section 315(b) requires us to look at both the action, as well as the asserted patent (i.e., “a complaint alleging infringement of the patent”). Petitioner does not contend, for example, that challenged patents (e.g., the ’651 patent) were not asserted in “a complaint alleging infringement” in the Versata action. Regardless, we disagree with Petitioner’s characterization of the Board’s decisions. In discussing the significance of the Versata and Ford actions, our focus clearly was on the actions as well. Dec. 11–12. In particular, we noted that in resolving the forum dispute in favor of the Michigan court, the respective courts treated the cases as if they were a single proceeding at least in terms of ability to assert claims and recognition of timing. Consequently, we agree that the relevant factor in determining whether the earlier complaint in the Versata action is operative for purposes of § 315(b) is the continuous assertion of the patent against Ford, not whether the case was formally consolidated. Id. at 12; see also Ex. 1131 (instructing the parties to provide good faith reasons why the Versata action should not be dismissed, “so that the issues may [be] dealt with in the Michigan court”). Further, regarding Petitioner’s arguments concerning the relative numbers of patents raised in the Versata action as compared to the Ford action and the allegedly differing “Versata parties” in Texas and Michigan, Petitioner did not raise these arguments during the Preliminary Proceedings, and we cannot have overlooked or misapprehended arguments not raised.” slip op. at 11
Discretionary denialPatents in suitUS 7,882,057 - Ford Motor Company v. Versata Development Group, Inc.Rehearing deniedPTAB · Jul 6, 2017 · IPR2017-00150 · APJ James B Arpin · IPR · Rehearing
Denied Ford’s rehearing requests, leaving institution denied because the earlier infringement complaint remained operative under § 315(b).
RulingsRehearing decision- RehearingRehearing, deniedDenied
“[a] request for rehearing is not an opportunity merely to disagree with the panel’s assessment of the arguments or weighing of the evidence, or to present new arguments or evidence. It is not an abuse of discretion to have performed an analysis or reached a conclusion with which Petitioner disagrees, and mere disagreement with the Board’s analysis or conclusion is not a proper basis for rehearing.” slip op. at 13
- PTAB / AIA Trials › §315(b) time barDecided for patent owner
“to pursue courses of action available to them before the action had been brought.” Req. 7–8 (quoting Atlanta Gas, slip op. at 13). Unlike Atlanta Gas and the other cases cited by Petitioner, we are persuaded that, after the dismissal of the Versata action, the parties in the instant proceedings did not enjoy the restored ability to pursue courses of action available to them before the Versata action had been brought. The Ford action would remain the first action filed, so that a new action by Patent Owner filed in the U.S. District Court for the Eastern District of Texas would remain subject to the Eleventh Circuit’s first-to-file rule. See Merrill Lynch, Pierce, Fenner & Smith, Inc. v. Haydu, 675 F.2d 1169, 1174 (11th Cir. 1982) (“In the absence of compelling circumstances, the court initially seized of a controversy should be the one to decide the case.” (Emphasis added.)). Further, although the U.S. District Court for the Eastern District of Texas had asked the parties to provide any “good faith reasons” for maintaining the Versata action, Patent Owner responded that it did not oppose dismissal, and Petitioner chose not to respond. Dec. 7–8. Thus, on this record, we understand that either party could have argued to retain the Versata action, but that, after the dismissal, the parties no longer enjoyed the ability to bring this action in the U.S. District Court for the Eastern District of Texas.” slip op. at 9
- BurdenDecided for patent owner
“in resolving the forum dispute in favor of the Michigan court, the respective courts treated the cases as if they were a single proceeding at least in terms of ability to assert claims and recognition of timing. Consequently, we agree that the relevant factor in determining whether the earlier complaint in the Versata action is operative for purposes of § 315(b) is the continuous assertion of the patent against Ford, not whether the case was formally consolidated. Id. at 12; see also Ex. 1131 (instructing the parties to provide good faith reasons why the Versata action should not be dismissed, “so that the issues may [be] dealt with in the Michigan court”). Further, regarding Petitioner’s arguments concerning the relative numbers of patents raised in the Versata action as compared to the Ford action and the allegedly differing “Versata parties” in Texas and Michigan, Petitioner did not raise these arguments during the Preliminary Proceedings, and we cannot have overlooked or misapprehended arguments not raised.” slip op. at 12
Discretionary denialPatents in suitUS 7,882,057 - Ford Motor Company v. Versata Development Group, Inc.Rehearing deniedPTAB · Jul 6, 2017 · IPR2017-00147 · APJ James B Arpin · IPR · Rehearing
The Board denied Ford’s rehearing requests, leaving in place the denial of institution because § 315(b)’s time bar applied after the dismissal without prejudice.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“For these reasons, we were persuaded that, because the facts of the instant proceedings, namely, that the dismissal “was not pursuant to Rule 41(a), was not ‘voluntary,’ and, most importantly, did not leave the parties as though the action had never been brought,” are not sufficiently similar to the facts present in the precedential decisions, we are not bound to find that 5 As we noted in our decisions denying institution, in holding that the dismissal put the appellant in the position in which it would have been, had it never filed a notice of appeal, the Federal Circuit in Graves compared those circumstances with the voluntary dismissal in Bonneville, in which the “nullifying effect of a voluntary dismissal in accordance with Fed. R. Civ. P. 41(a)(1) was applied.” Dec. 6 (quoting Graves, 294 F.3d at 1356). the dismissal of the Versata action “without prejudice” necessarily lifted the Section 315(b) bar. 2. Creation of “Continuous Chain of Assertion” Exception” slip op. at 10
- PTAB / AIA Trials › §315(b) time barDecided for patent owner
“to pursue courses of action available to them before the action had been brought.” Req. 7–8 (quoting Atlanta Gas, slip op. at 13). Unlike Atlanta Gas and the other cases cited by Petitioner, we are persuaded that, after the dismissal of the Versata action, the parties in the instant proceedings did not enjoy the restored ability to pursue courses of action available to them before the Versata action had been brought. The Ford action would remain the first action filed, so that a new action by Patent Owner filed in the U.S. District Court for the Eastern District of Texas would remain subject to the Eleventh Circuit’s first-to-file rule. See Merrill Lynch, Pierce, Fenner & Smith, Inc. v. Haydu, 675 F.2d 1169, 1174 (11th Cir. 1982) (“In the absence of compelling circumstances, the court initially seized of a controversy should be the one to decide the case.” (Emphasis added.)). Further, although the U.S. District Court for the Eastern District of Texas had asked the parties to provide any “good faith reasons” for maintaining the Versata action, Patent Owner responded that it did not oppose dismissal, and Petitioner chose not to respond. Dec. 7–8. Thus, on this record, we understand that either party could have argued to retain the Versata action, but that, after the dismissal, the parties no longer enjoyed the ability to bring this action in the U.S. District Court for the Eastern District of Texas.” slip op. at 9
- BurdenDecided for patent owner
“We understand that Petitioner would weigh the relevant facts differently than we do. Nevertheless, [a] request for rehearing is not an opportunity merely to disagree with the panel’s assessment of the arguments or weighing of the evidence, or to present new arguments or evidence. It is not an abuse of discretion to have performed an analysis or reached a conclusion with which Petitioner disagrees, and mere disagreement with the Board’s analysis or conclusion is not a proper basis for rehearing. Sophos, Inc. v. Finjan, Inc., Case IPR2015-01022, slip op. at 3–4 (PTAB Jan. 28, 2016) (Paper 9).” slip op. at 13
Discretionary denialPatents in suitUS 7,464,064 - Ford Motor Company v. Versata Development Group, Inc.Rehearing deniedPTAB · Jul 6, 2017 · IPR2017-00146 · APJ James B Arpin · IPR · Rehearing
The Board denied Ford’s rehearing requests, leaving in place the denial of institution because the § 315(b) time bar applied after the Versata action was dismissed without prejudice.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“[a] request for rehearing is not an opportunity merely to disagree with the panel’s assessment of the arguments or weighing of the evidence, or to present new arguments or evidence. It is not an abuse of discretion to have performed an analysis or reached a conclusion with which Petitioner disagrees, and mere disagreement with the Board’s analysis or conclusion is not a proper basis for rehearing. Sophos, Inc. v. Finjan, Inc., Case IPR2015-01022, slip op. at 3–4 (PTAB Jan. 28, 2016) (Paper 9).” slip op. at 13
- PTAB / AIA Trials › §315(b) time barDecided for patent owner
“to pursue courses of action available to them before the action had been brought.” Req. 7–8 (quoting Atlanta Gas, slip op. at 13). Unlike Atlanta Gas and the other cases cited by Petitioner, we are persuaded that, after the dismissal of the Versata action, the parties in the instant proceedings did not enjoy the restored ability to pursue courses of action available to them before the Versata action had been brought. The Ford action would remain the first action filed, so that a new action by Patent Owner filed in the U.S. District Court for the Eastern District of Texas would remain subject to the Eleventh Circuit’s first-to-file rule. See Merrill Lynch, Pierce, Fenner & Smith, Inc. v. Haydu, 675 F.2d 1169, 1174 (11th Cir. 1982) (“In the absence of compelling circumstances, the court initially seized of a controversy should be the one to decide the case.” (Emphasis added.)). Further, although the U.S. District Court for the Eastern District of Texas had asked the parties to provide any “good faith reasons” for maintaining the Versata action, Patent Owner responded that it did not oppose dismissal, and Petitioner chose not to respond. Dec. 7–8. Thus, on this record, we understand that either party could have argued to retain the Versata action, but that, after the dismissal, the parties no longer enjoyed the ability to bring this action in the U.S. District Court for the Eastern District of Texas.” slip op. at 9
Discretionary denialPatents in suitUS 5,825,651 - Ford Motor Company v. Versata Development Group, Inc.Rehearing deniedPTAB · Jul 6, 2017 · IPR2017-00144 · APJ James B Arpin · IPR · Rehearing
The Board denied Ford’s rehearing requests and left in place the denial of institution because the § 315(b) time bar was not lifted by the dismissal without prejudice.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“B. STANDARD OF REVIEW Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co. Inc., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). The request must identify, with specificity, all matters that the moving party believes the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d).” slip op. at 3
- PTAB / AIA Trials › §315(b) time barDecided for patent owner
“to pursue courses of action available to them before the action had been brought.” Req. 7–8 (quoting Atlanta Gas, slip op. at 13). Unlike Atlanta Gas and the other cases cited by Petitioner, we are persuaded that, after the dismissal of the Versata action, the parties in the instant proceedings did not enjoy the restored ability to pursue courses of action available to them before the Versata action had been brought. The Ford action would remain the first action filed, so that a new action by Patent Owner filed in the U.S. District Court for the Eastern District of Texas would remain subject to the Eleventh Circuit’s first-to-file rule. See Merrill Lynch, Pierce, Fenner & Smith, Inc. v. Haydu, 675 F.2d 1169, 1174 (11th Cir. 1982) (“In the absence of compelling circumstances, the court initially seized of a controversy should be the one to decide the case.” (Emphasis added.)). Further, although the U.S. District Court for the Eastern District of Texas had asked the parties to provide any “good faith reasons” for maintaining the Versata action, Patent Owner responded that it did not oppose dismissal, and Petitioner chose not to respond. Dec. 7–8. Thus, on this record, we understand that either party could have argued to retain the Versata action, but that, after the dismissal, the parties no longer enjoyed the ability to bring this action in the U.S. District Court for the Eastern District of Texas.” slip op. at 9
Discretionary denialPatents in suitUS 7,200,582
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.