• Milwaukee Electric Tool Corporation v. Klein Tools, Inc.Institution denied
  PTAB · Sep 12, 2025 · IPR2025-00724 · APJ Coke Morgan Stewart · IPR · Director review

  The Director granted Patent Owner’s discretionary-denial requests and denied the petitions under § 314(a), instituting no trial because the parallel ITC proceeding favored denial.

  RulingsDirector review decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied

    “Other considerations favor discretionary denial. In particular, the projected final written decision due date in the Board proceedings is November 21, 2026. DD Req. 6; DD Opp. 20. The hearing in the parallel U.S. International Trade Commission (“ITC”) investigation is set for 1 Citations are to papers in IPR2025-00724. The parties filed similar papers in IPR2025-00892 and PGR2025-00048. November 17, 2025, the scheduled final initial determination date is February 18, 2026, and the target date for completion is June 18, 2026. DD Req. 10–12; Ex. 2007, 3. As such, it is unlikely that a final written decision in these proceedings will issue before the ITC investigation is completed, resulting in significant duplication of effort, additional expense for the parties, and a risk of inconsistent decisions. Additionally, there is insufficient evidence that the ITC is likely to stay its proceeding even if the Board were to institute trial. DD Req. 9. Furthermore, there has been meaningful investment in the parallel proceeding by the parties. Id. at 11– 12. For example, the ITC held a Markman hearing, fact discovery is complete, and expert discovery will have completed before a decision on institution is due. Id.; Ex. 2007, 2. On balance, the circumstances in these cases favor discretionary denial.” 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 denial
  Patents in suitUS 11,452,327
• Amazon Web Services, Inc. v. Croga Innovations, Ltd.Institution denied
  PTAB · Sep 3, 2025 · IPR2025-00884 · APJ Coke Morgan Stewart · IPR · Director review

  The Director granted Patent Owner’s request for discretionary denial, denied the petition under § 314(a), and instituted no trial.

  RulingsDirector review decision

  • PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDenied

    “However, this is the fourth petition for inter partes review involving the challenged patent. One petition was voluntarily dismissed prior to institution, and in the other two the Board denied institution on the merits. See Fortinet v. Croga Innovations Ltd., IPR2025-00086, Paper 9 at 20–21 (PTAB Mar. 27, 2025); Cisco Sys., Inc. v. Croga Innovations Ltd., IPR2024- 01196, Paper 7 at 17, 21 (PTAB Feb. 13, 2025). Here, Petitioner states that its Petition “addresses the precise deficiency identified by the Board in denying the earlier petitions.” DD Opp. 13. Petitioner’s admission raises concerns of roadmaping and weighs in favor of discretionary denial.” slip op. at 2

  • Other 314aInstitution denied discretionary otherDenied

    “Furthermore, an ex parte reexamination has been ordered on the challenged patent, and the Office has issued a final rejection on the challenged claims. DD Opp. 2; Ex. 2003. It is not an appropriate use of Office resources to review a patent in two separate, concurrent Office proceedings, especially when the reexamination is in an advanced stage. Accordingly, discretionary denial is appropriate. 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 2

  Discretionary denial
  Patents in suitUS 10,601,780
• Advanced Micro Devices, Inc. v. Advanced Cluster Systems, Inc.Institution denied
  PTAB · Sep 3, 2025 · IPR2025-00863 · APJ Coke Morgan Stewart · IPR · Director review

  The Director denied institution of IPR of the challenged patent under § 314(a), citing settled expectations, repeated prior challenges, and insufficiently tailored national-security arguments.

  RulingsDirector review decision

  • Settled expectationsInstitution denied settled expectationsInstitution denied

    “Other considerations weigh in favor of discretionary denial. In particular, the challenged patent has been in force for approximately six years, creating settled expectations for Patent Owner. Additionally, the” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied

    “1 Citations are to papers in IPR2025-00862. The parties filed similar papers in IPR2025-00863. 2 Petitioner filed motions for joinder to IPR2025-00794 and IPR2025-00795, respectively; however, those proceedings have been denied institution. As such, this decision will address the discretionary considerations for these Petitions on their own. challenged patent was involved in two prior Board proceedings. In those prior proceedings, the Board denied institution finding that the petitions did not present a reasonable likelihood that a challenged claim was unpatentable. Paper 12, 3; NVIDIA Corp. v. Advanced Cluster Sys., Inc., IPR2021-00019, Paper 9 (PTAB May 5, 2021) (decision denying institution); NVIDIA Corp. v. Advanced Cluster Sys., Inc., IPR2021-00020, Paper 9 (PTAB May 5, 2021) (decision denying institution). Even absent road mapping, repeated prior challenges weigh against institution.” slip op. at 2

  • Other 314aInstitution denied discretionary otherInstitution denied

    “Petitioner also argues that national security interests weigh against discretionary denial. DD Opp. 2–6. In particular, Petitioner states that its products “are at the heart of AI, supercomputers, and healthcare applications—all technologies recognized by the U.S. government as vital to the country.” Id. at 2. Petitioner, however, does not explain in sufficient detail why review of the challenged patents is in the interest of national security. That is, Petitioner’s arguments are not narrowly-tailored towards particular products, and Petitioner does not sufficiently explain how national security interests warrant review of the specific patents challenged in these proceedings. 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 denial
  Patents in suitUS 10,333,768
• Advanced Micro Devices, Inc. v. Advanced Cluster Systems, Inc.Institution denied
  PTAB · Sep 3, 2025 · IPR2025-00862 · APJ Coke Morgan Stewart · IPR · Director review

  The Director granted Patent Owner’s discretionary-denial request and denied institution of the petitions under § 314(a), citing settled expectations, prior challenges, and insufficiently tailored national security arguments.

  RulingsDirector review decision

  • Settled expectationsDenied

    “Other considerations weigh in favor of discretionary denial. In particular, the challenged patent has been in force for approximately six years, creating settled expectations for Patent Owner. Additionally, the” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied

    “1 Citations are to papers in IPR2025-00862. The parties filed similar papers in IPR2025-00863. 2 Petitioner filed motions for joinder to IPR2025-00794 and IPR2025-00795, respectively; however, those proceedings have been denied institution. As such, this decision will address the discretionary considerations for these Petitions on their own. challenged patent was involved in two prior Board proceedings. In those prior proceedings, the Board denied institution finding that the petitions did not present a reasonable likelihood that a challenged claim was unpatentable. Paper 12, 3; NVIDIA Corp. v. Advanced Cluster Sys., Inc., IPR2021-00019, Paper 9 (PTAB May 5, 2021) (decision denying institution); NVIDIA Corp. v. Advanced Cluster Sys., Inc., IPR2021-00020, Paper 9 (PTAB May 5, 2021) (decision denying institution). Even absent road mapping, repeated prior challenges weigh against institution.” slip op. at 2

  • Other 314aDenied

    “Petitioner also argues that national security interests weigh against discretionary denial. DD Opp. 2–6. In particular, Petitioner states that its products “are at the heart of AI, supercomputers, and healthcare applications—all technologies recognized by the U.S. government as vital to the country.” Id. at 2. Petitioner, however, does not explain in sufficient detail why review of the challenged patents is in the interest of national security. That is, Petitioner’s arguments are not narrowly-tailored towards particular products, and Petitioner does not sufficiently explain how national security interests warrant review of the specific patents challenged in these proceedings. 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 denial
  Patents in suitUS 10,333,768
• Amneal Pharmaceuticals, Inc. v. Nivagen Pharmaceuticals, Inc.Institution denied
  PTAB · Sep 3, 2025 · IPR2025-00731 · APJ Coke Morgan Stewart · IPR · Director review

  The Director denied institution of IPR2025-00731 because the district court had addressed substantially similar preliminary validity issues, making Board review an inefficient use of Office resources.

  RulingsDirector review decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied

    “the challenged patents have not been in force for a significant period of time (issued in 2023 and 2024). Furthermore, no trial date has been set in the related district court proceeding, and Petitioner persuasively argues that a trial is unlikely to take place before the projected final written decision date. DD Opp. 6–9.” slip op. at 2

  • Other 314aInstitution denied discretionary otherDenied

    “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 denial
  Patents in suitUS 11,925,661
• Jinkosolar Co., Ltd. v. Longi Green Energy Technology Co. Ltd.Institution denied
  PTAB · Sep 3, 2025 · IPR2025-00859 · APJ Coke Morgan Stewart · IPR · Director review

  The Director granted Patent Owner’s request for discretionary denial, denied the Petition under § 314(a), and instituted no trial based on the holistic assessment of the evidence and arguments.

  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 November 21, 2026. DD Req. 6. The district court’s scheduled trial date is August 31, 2026, and the time-to-trial statistics suggest trial will begin on November 7, 2026. Id. at 6–8; Ex. 2003; Ex. 2004. 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. Additionally, there is insufficient evidence that the district court is likely to stay its proceeding if the Board were to institute trial. DD Req. 4–5.” slip op. at 2

  • Settled expectationsInstitution denied settled expectationsDenied

    “Moreover, the challenged patent has been in force for approximately ten years, creating strong 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). Petitioner’s unsupported argument that Patent Owner does not have strong settled expectations because the patent was not previously “asserted, licensed, or otherwise applied” by Patent Owner or the prior owner of the patent does not defeat Patent Owner’s strong settled expectations. DD Opp. 6–7 (quoting Intel Corp. v. Proxense LLC, IPR2025-00327, Paper 12, 2–3 (Director June 26, 2025)). Additionally, Petitioner has been aware of the published application for the challenged patent since at least 2016, when the application was listed on a search report during prosecution of one of Petitioner’s Chinese patent applications. See DD Req. 21.” slip op. at 2

  • Director reviewDirector review, deniedDenied

    “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). In consideration of the foregoing, it is: ORDERED that Patent Owner’s request for discretionary denial is granted; and FURTHER ORDERED that the Petition is denied, and no trial is instituted.” slip op. at 3

  Discretionary denial
  Patents in suitUS 9,515,214
• Taiwan Semiconductor Manufacturing Company Ltd. / Apple Inc. v. Marlin Semiconductor Ltd.Institution denied
  PTAB · Sep 3, 2025 · IPR2025-00879 · APJ Coke Morgan Stewart · IPR · Director review

  The Director denied institution in IPR2025-00879 under § 314(a), citing the parallel ITC trial, settled expectations, and insufficiently tailored public-interest arguments.

  RulingsDirector review decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied

    “In particular, the projected final written decision due date for each of these cases is November 15, 2026. The hearing in the parallel U.S. International Trade Commission (“ITC”) investigation is set for February 2, 2026. DD Req. 14. As such, it is unlikely that a final written decision in these proceedings will issue before the ITC trial occurs, resulting in significant duplication of effort, additional expense for the parties, and a risk of inconsistent decisions. In addition, the patents challenged in IPR2025- 00848, IPR2025-00864, IPR2025-00865, and IPR2025-00879 have been in force for seven, nine, nine, and ten years, respectively, creating strong 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- 1 Citations are to papers in IPR2025-00847. The parties filed similar papers in IPR2025-00848, IPR2025-00864, IPR2025-00865, and IPR2025-00879. 00408, Paper 21 at 2–3 (Director June 18, 2025). These factors favor discretionary denial.” slip op. at 2

  • Settled expectationsInstitution denied settled expectationsDenied

    “these cases is November 15, 2026. The hearing in the parallel U.S. International Trade Commission (“ITC”) investigation is set for February 2, 2026. DD Req. 14. As such, it is unlikely that a final written decision in these proceedings will issue before the ITC trial occurs, resulting in significant duplication of effort, additional expense for the parties, and a risk of inconsistent decisions. In addition, the patents challenged in IPR2025- 00848, IPR2025-00864, IPR2025-00865, and IPR2025-00879 have been in force for seven, nine, nine, and ten years, respectively, creating strong 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- 1 Citations are to papers in IPR2025-00847. The parties filed similar papers in IPR2025-00848, IPR2025-00864, IPR2025-00865, and IPR2025-00879. 00408, Paper 21 at 2–3 (Director June 18, 2025). These factors favor discretionary denial.” slip op. at 2

  • Other 314aInstitution denied discretionary otherDenied

    “Petitioner argues that national security, economic, and public interest considerations counsel against discretionary denial because “[t]he semiconductor chips manufactured by TSMC are vital to leading U.S. companies (from Apple and NVIDIA to Amazon and Tesla) . . . and national security and defense through TSMC’s CyberShuttle program.” DD Opp. 31. Petitioner, however, does not explain in sufficient detail why review of the challenged patents is in the interest of national security, the economy, or the public. That is, Petitioner’s arguments are not narrowly-tailored towards particular products or manufacturing methods, and Petitioner does not sufficiently explain how national security, economic, or public interests warrant review of the specific patents challenged in these proceedings.” slip op. at 3

  Discretionary denial
  Patents in suitUS 9,093,473
• Taiwan Semiconductor Manufacturing Company Ltd. / Apple Inc. v. Marlin Semiconductor Ltd.Institution denied
  PTAB · Sep 3, 2025 · IPR2025-00865 · APJ Coke Morgan Stewart · IPR · Director review

  The Director denied institution in IPR2025-00865 under § 314(a), citing the parallel ITC schedule, duplication risks, and Patent Owner’s settled expectations.

  RulingsDirector review decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied

    “In particular, the projected final written decision due date for each of these cases is November 15, 2026. The hearing in the parallel U.S. International Trade Commission (“ITC”) investigation is set for February 2, 2026. DD Req. 14. As such, it is unlikely that a final written decision in these proceedings will issue before the ITC trial occurs, resulting in significant duplication of effort, additional expense for the parties, and a risk of inconsistent decisions. In addition, the patents challenged in IPR2025- 00848, IPR2025-00864, IPR2025-00865, and IPR2025-00879 have been in force for seven, nine, nine, and ten years, respectively, creating strong 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-” slip op. at 2

  • Settled expectationsInstitution denied settled expectationsDenied

    “these cases is November 15, 2026. The hearing in the parallel U.S. International Trade Commission (“ITC”) investigation is set for February 2, 2026. DD Req. 14. As such, it is unlikely that a final written decision in these proceedings will issue before the ITC trial occurs, resulting in significant duplication of effort, additional expense for the parties, and a risk of inconsistent decisions. In addition, the patents challenged in IPR2025- 00848, IPR2025-00864, IPR2025-00865, and IPR2025-00879 have been in force for seven, nine, nine, and ten years, respectively, creating strong 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-” slip op. at 2

  • Other 314aInstitution denied discretionary otherDenied

    “Petitioner argues that national security, economic, and public interest considerations counsel against discretionary denial because “[t]he semiconductor chips manufactured by TSMC are vital to leading U.S. companies (from Apple and NVIDIA to Amazon and Tesla) . . . and national security and defense through TSMC’s CyberShuttle program.” DD Opp. 31. Petitioner, however, does not explain in sufficient detail why review of the challenged patents is in the interest of national security, the economy, or the public. That is, Petitioner’s arguments are not narrowly-tailored towards particular products or manufacturing methods, and Petitioner does not sufficiently explain how national security, economic, or public interests warrant review of the specific patents challenged in these proceedings.” slip op. at 3

  Discretionary denial
  Patents in suitUS 9,147,747
• Taiwan Semiconductor Manufacturing Company Ltd. / Apple Inc. v. Marlin Semiconductor Ltd.Institution denied
  PTAB · Sep 3, 2025 · IPR2025-00864 · APJ Coke Morgan Stewart · IPR · Director review

  The Director denied institution in IPR2025-00864 under § 314(a), finding the parallel ITC schedule and settled expectations favored discretionary denial.

  RulingsDirector review decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied

    “In particular, the projected final written decision due date for each of these cases is November 15, 2026. The hearing in the parallel U.S. International Trade Commission (“ITC”) investigation is set for February 2, 2026. DD Req. 14. As such, it is unlikely that a final written decision in these proceedings will issue before the ITC trial occurs, resulting in significant duplication of effort, additional expense for the parties, and a risk of inconsistent decisions. In addition, the patents challenged in IPR2025- 00848, IPR2025-00864, IPR2025-00865, and IPR2025-00879 have been in force for seven, nine, nine, and ten years, respectively, creating strong 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-” slip op. at 2

  • Settled expectationsInstitution denied settled expectationsDenied

    “these cases is November 15, 2026. The hearing in the parallel U.S. International Trade Commission (“ITC”) investigation is set for February 2, 2026. DD Req. 14. As such, it is unlikely that a final written decision in these proceedings will issue before the ITC trial occurs, resulting in significant duplication of effort, additional expense for the parties, and a risk of inconsistent decisions. In addition, the patents challenged in IPR2025- 00848, IPR2025-00864, IPR2025-00865, and IPR2025-00879 have been in force for seven, nine, nine, and ten years, respectively, creating strong 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-” slip op. at 2

  • Other 314aInstitution denied discretionary otherDenied

    “Petitioner argues that national security, economic, and public interest considerations counsel against discretionary denial because “[t]he semiconductor chips manufactured by TSMC are vital to leading U.S. companies (from Apple and NVIDIA to Amazon and Tesla) . . . and national security and defense through TSMC’s CyberShuttle program.” DD Opp. 31. Petitioner, however, does not explain in sufficient detail why review of the challenged patents is in the interest of national security, the economy, or the public. That is, Petitioner’s arguments are not narrowly-tailored towards particular products or manufacturing methods, and Petitioner does not sufficiently explain how national security, economic, or public interests warrant review of the specific patents challenged in these proceedings.” slip op. at 3

  Discretionary denial
  Patents in suitUS 9,184,292
• Taiwan Semiconductor Manufacturing Company Ltd. / Apple Inc. v. Marlin Semiconductor Ltd.Institution denied
  PTAB · Sep 3, 2025 · IPR2025-00848 · APJ Coke Morgan Stewart · IPR · Director review

  The Director denied institution in IPR2025-00848, IPR2025-00864, IPR2025-00865, and IPR2025-00879 under § 314(a), citing ITC overlap and settled expectations.

  RulingsDirector review decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied

    “In particular, the projected final written decision due date for each of these cases is November 15, 2026. The hearing in the parallel U.S. International Trade Commission (“ITC”) investigation is set for February 2, 2026. DD Req. 14. As such, it is unlikely that a final written decision in these proceedings will issue before the ITC trial occurs, resulting in significant duplication of effort, additional expense for the parties, and a risk of inconsistent decisions. In addition, the patents challenged in IPR2025- 00848, IPR2025-00864, IPR2025-00865, and IPR2025-00879 have been in force for seven, nine, nine, and ten years, respectively, creating strong 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- 1 Citations are to papers in IPR2025-00847. The parties filed similar papers in IPR2025-00848, IPR2025-00864, IPR2025-00865, and IPR2025-00879. 00408, Paper 21 at 2–3 (Director June 18, 2025). These factors favor discretionary denial.” slip op. at 2

  • Settled expectationsInstitution denied settled expectationsDenied

    “these cases is November 15, 2026. The hearing in the parallel U.S. International Trade Commission (“ITC”) investigation is set for February 2, 2026. DD Req. 14. As such, it is unlikely that a final written decision in these proceedings will issue before the ITC trial occurs, resulting in significant duplication of effort, additional expense for the parties, and a risk of inconsistent decisions. In addition, the patents challenged in IPR2025- 00848, IPR2025-00864, IPR2025-00865, and IPR2025-00879 have been in force for seven, nine, nine, and ten years, respectively, creating strong 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- 1 Citations are to papers in IPR2025-00847. The parties filed similar papers in IPR2025-00848, IPR2025-00864, IPR2025-00865, and IPR2025-00879. 00408, Paper 21 at 2–3 (Director June 18, 2025). These factors favor discretionary denial.” slip op. at 2

  • Other 314aInstitution denied discretionary otherDenied

    “Petitioner argues that national security, economic, and public interest considerations counsel against discretionary denial because “[t]he semiconductor chips manufactured by TSMC are vital to leading U.S. companies (from Apple and NVIDIA to Amazon and Tesla) . . . and national security and defense through TSMC’s CyberShuttle program.” DD Opp. 31. Petitioner, however, does not explain in sufficient detail why review of the challenged patents is in the interest of national security, the economy, or the public. That is, Petitioner’s arguments are not narrowly-tailored towards particular products or manufacturing methods, and Petitioner does not sufficiently explain how national security, economic, or public interests warrant review of the specific patents challenged in these proceedings.” slip op. at 3

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied

    “circumstances. In particular, Petitioner provides persuasive reasoning, supported by evidence, that the Office erred in a manner material to the patentability of the challenged patent during patent examination, and, accordingly, discretionary denial under 35 U.S.C. § 325(d) is not appropriate. Specifically, during prosecution of the challenged patent, the patent examiner applied Chien7702 to reject the claims, but subsequently allowed the claims after the applicant amended them. DD Opp. 5–6. Petitioner persuasively demonstrates that the patent examiner overlooked 2 US Pat. 6,815,770, Nov. 9, 2004 (Ex. 1037). certain teachings in Chien770 that appear to disclose the claimed features that the patent examiner indicated were not taught by the prior art of record, including Chien770. Id. at 7–10. Although the challenged patent has been in force for fifteen years, Petitioner appears to show a material error by the Office, and it is an appropriate use of Office resources to review the potential error.” slip op. at 3

  Discretionary denial
  Patents in suitUS 9,953,880

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.