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  • PTAB · 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 denial
    Patents in suitUS 12,168,036
  • PTAB · Aug 19, 2026 · PGR2026-00023 · APJ John A Squires · PGR · Director review

    The Director denied the PGR petition and instituted no trial because Petitioner failed to identify Venator as a real party in interest within the statutory filing period.

    RulingsDirector review decision
    • PTAB / AIA Trials › Real party in interest / privityInstitution denied rpiDecided for patent owner

      “However, as I previously explained, RPIs are not limited to entities that are actually funding and controlling the proceeding but include entities that have the ability to control the proceeding. See Tianma, IPR2025-01579, Paper 12 at 9–10. Petitioner argues that its two owners do not have unilateral control of Petitioner. However, unilateral control is not the standard, and control of Petitioner is vested solely in its two owners as members of the Board of Directors. See Moyes Decl. ¶ 7. Accordingly, I am not persuaded that Venator and Lanxess do not have the ability to control” slip op. at 3

    • PTAB / AIA Trials › §315(b) time barDecided for patent owner

      “Patent Owner further argues that Petitioner cannot correct its RPI listing because adding an RPI would require a new filing date that places the Petition outside the 9-month window for filing a PGR. DD Opp. 11–12 (citing Corning, IPR20214-00440, Paper 68 at 24). Patent Owner is correct. See Sun Pharm. Indus., Inc. v. Biofrontera, Inc., PGR2026-00021, Paper 12 at 4 (Director May 26, 2026) (denying PGR petition because Petitioner did not meet the requirement to name all RPI within the statutory timeframe for filing a PGR petition). Accordingly, this Petition is denied, and Petitioner may file an IPR petition listing the appropriate real parties in interest.3” slip op. at 4

    • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied rpiInstitution denied

      “listing because adding an RPI would require a new filing date that places the Petition outside the 9-month window for filing a PGR. DD Opp. 11–12 (citing Corning, IPR20214-00440, Paper 68 at 24). Patent Owner is correct. See Sun Pharm. Indus., Inc. v. Biofrontera, Inc., PGR2026-00021, Paper 12 at 4 (Director May 26, 2026) (denying PGR petition because Petitioner did not meet the requirement to name all RPI within the statutory timeframe for filing a PGR petition). Accordingly, this Petition is denied, and Petitioner may file an IPR petition listing the appropriate real parties in interest.3 In consideration of the foregoing, it is: ORDERED that the Petition is denied, and no trial is instituted.” slip op. at 4

    Discretionary denial
    Patents in suitUS 12,370,716
  • PTAB · May 26, 2026 · PGR2026-00021 · APJ John A Squires · PGR · Director review

    The Director denied Sun Pharmaceutical Industries’ PGR petition because it failed to show that it had identified all real parties in interest.

    RulingsDirector review decision
    • PTAB / AIA Trials › Real party in interest / privityInstitution denied rpiDecided for patent owner

      “As I previously explained, RPIs are not limited to entities that are actually funding and controlling the proceeding, but include entities that have the ability to control the proceeding. See Tianma Microelectronics (Director Mar. 18, 2026) (precedential) (“With its identification of RPIs in dispute, it is Petitioner’s burden to bring forth evidence or arguments demonstrating that it had named all RPIs—and that none were foreign governments or entities a foreign government had the ability to control.”); see also Worlds Inc. v. Bungie, Inc., 903 F.3d 1237, 1244–45 (Fed. Cir. 2018) (remanding to the Board to further consider RPI where the patent owner identified an unnamed party with the “opportunity to control” the proceeding). Petitioner has not provided sufficient evidence that SPI Ltd., the corporate parent and 100% owner of SPI Inc., does not have the ability to control the proceeding. Rather, Petitioner’s declaration evidence is focused on whether SPI Inc. is actually funding or controlling the proceeding. See Ex. 1021 ¶ 4 (“SPI Inc. is an indirect wholly-owned subsidiary of Sun Pharmaceutical Industries, Ltd.”). On this record, Petitioner fails to carry its burden to establish that it has identified all RPIs.” slip op. at 2

    • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied

      “(Director Mar. 18, 2026) (precedential) (“With its identification of RPIs in dispute, it is Petitioner’s burden to bring forth evidence or arguments demonstrating that it had named all RPIs—and that none were foreign governments or entities a foreign government had the ability to control.”); see also Worlds Inc. v. Bungie, Inc., 903 F.3d 1237, 1244–45 (Fed. Cir. 2018) (remanding to the Board to further consider RPI where the patent owner identified an unnamed party with the “opportunity to control” the proceeding). Petitioner has not provided sufficient evidence that SPI Ltd., the corporate parent and 100% owner of SPI Inc., does not have the ability to control the proceeding. Rather, Petitioner’s declaration evidence is focused on whether SPI Inc. is actually funding or controlling the proceeding. See Ex. 1021 ¶ 4 (“SPI Inc. is an indirect wholly-owned subsidiary of Sun Pharmaceutical Industries, Ltd.”). On this record, Petitioner fails to carry its burden to establish that it has identified all RPIs.” slip op. at 3

    Discretionary denial
    Patents in suitUS 12,280,146
  • PTAB · Mar 18, 2026 · IPR2025-01579 · APJ John A Squires · IPR · Director review

    The Director denied institution because Petitioner failed to establish that a foreign government was not an RPI, making Petitioner ineligible to file the IPR.

    RulingsDirector review decision
    • PTAB / AIA Trials › Real party in interest / privityInstitution denied rpiInstitution denied

      “Patent Owner’s evidence is sufficient to put into dispute whether the Petition identified all RPIs and whether there is an RPI who is not a “person” eligible to file an IPR. See Worlds Inc. v. Bungie, Inc., 903 F.3d 1237, 1244 (Fed. Cir. 2018) (“[A] patent owner must produce some evidence that tends to show that a particular third party should be named a real party in interest.”); Yangtze Memory Techs. Co. v. Micron Tech., Inc., IPR2025- 00098, Paper 38 at 7 (Director Jan. 15, 2026) (informative) (explaining that the Office’s “mandate to protect the public interest is especially compelling” where a petitioner does not identify all RPIs). Patent Owner’s evidence that Petitioner is owned by AVIC Innovation and AVIC, AVIC is owned by a foreign government, and AVIC is included on the entity list is particularly persuasive. DD Req. 7–8 (citing Exs. 2013–19).” slip op. at 9

    • Other 314aInstitution denied discretionary otherInstitution denied

      “Today’s decision is consistent with Return Mail and—even if Return Mail reached the opposite conclusion—would be comfortably within the Office’s settled broad discretion in deciding whether to use its limited resources to institute IPR in any given case. Apple Inc. v. Squires, No. 2024- 1864, 2026 WL 406495, at *7 (Fed. Cir. Feb. 13, 2026) (“[T]he Director has broad and protected discretion not to launch an IPR, even when the statutory pre-conditions are met.”). Indeed, as to the exercise of discretion, as I stated in the Memorandum, “the integrity of PTAB proceedings depends on knowing who is behind a petition—who funds it, directs it, and/or benefits from it. Any opacity in that chain of control invites exploitation, may facilitate technology transfer contrary to U.S. law, regulation, and interests, and serves only to undermine public confidence in the integrity of the patent system.” Memorandum 4. Notions of fundamental fairness dictate no other result.” slip op. at 7

    Discretionary denial
    Patents in suitUS 11,251,394
  • PTAB · 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 denial
    Patents in suitUS 11,069,337
  • PTAB · Aug 14, 2025 · IPR2025-00809 · APJ Coke Morgan Stewart · IPR · Director review

    The Director denied institution of Walmart’s petition because Walmart was time-barred and did not show exceptional circumstances justifying joinder.

    RulingsDirector review decision
    • PTAB / AIA Trials › §315(b) time barInstitution denied time barDenied

      “infringement of the challenged patent on September 15, 2023. DD Req. 14. Petitioner waited until March 28, 2025 to file this Petition, more than eighteen months later. Thus, Petitioner is time-barred under 35 U.S.C. § 315(b) from filing a petition. Petitioner seeks to join a recently instituted inter partes review filed by Home Depot U.S.A., Inc. Paper 3 (motion to join to IPR2024-01420). However, petitions filed by time-barred parties should proceed only in exceptional circumstances. Realtek Semiconductor Corp. v. ParkerVision, Inc., IPR2025-00324, Paper 11 at 3 (Director June 25, 2025). Petitioner does not persuasively demonstrate exceptional circumstances here. For example, Petitioner argues that Patent Owner requested consolidation of its district court proceedings against Petitioner and Home Depot; that an initial district court proceeding was dismissed for standing, causing delays; and that the parallel district court proceeding is stayed. Paper 19, 3. However, Petitioner fails to persuasively demonstrate that these circumstances are exceptional and justify the joinder of a time-barred party. Accordingly, discretionary denial is appropriate under these circumstances.” slip op. at 2

    • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingDenied

      “infringement of the challenged patent on September 15, 2023. DD Req. 14. Petitioner waited until March 28, 2025 to file this Petition, more than eighteen months later. Thus, Petitioner is time-barred under 35 U.S.C. § 315(b) from filing a petition. Petitioner seeks to join a recently instituted inter partes review filed by Home Depot U.S.A., Inc. Paper 3 (motion to join to IPR2024-01420). However, petitions filed by time-barred parties should proceed only in exceptional circumstances. Realtek Semiconductor Corp. v. ParkerVision, Inc., IPR2025-00324, Paper 11 at 3 (Director June 25, 2025). Petitioner does not persuasively demonstrate exceptional circumstances here. For example, Petitioner argues that Patent Owner requested consolidation of its district court proceedings against Petitioner and Home Depot; that an initial district court proceeding was dismissed for standing, causing delays; and that the parallel district court proceeding is stayed. Paper 19, 3. However, Petitioner fails to persuasively demonstrate that these circumstances are exceptional and justify the joinder of a time-barred party. Accordingly, discretionary denial is appropriate under these circumstances.” slip op. at 2

    • Other 314aInstitution denied discretionary otherInstitution denied

      “infringement of the challenged patent on September 15, 2023. DD Req. 14. Petitioner waited until March 28, 2025 to file this Petition, more than eighteen months later. Thus, Petitioner is time-barred under 35 U.S.C. § 315(b) from filing a petition. Petitioner seeks to join a recently instituted inter partes review filed by Home Depot U.S.A., Inc. Paper 3 (motion to join to IPR2024-01420). However, petitions filed by time-barred parties should proceed only in exceptional circumstances. Realtek Semiconductor Corp. v. ParkerVision, Inc., IPR2025-00324, Paper 11 at 3 (Director June 25, 2025). Petitioner does not persuasively demonstrate exceptional circumstances here. For example, Petitioner argues that Patent Owner requested consolidation of its district court proceedings against Petitioner and Home Depot; that an initial district court proceeding was dismissed for standing, causing delays; and that the parallel district court proceeding is stayed. Paper 19, 3. However, Petitioner fails to persuasively demonstrate that these circumstances are exceptional and justify the joinder of a time-barred party. Accordingly, discretionary denial is appropriate under these circumstances. 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 11,562,402
  • PTAB · Aug 14, 2025 · IPR2025-00810 · APJ Coke Morgan Stewart · IPR · Director review

    The Director granted Patent Owner’s discretionary-denial request and denied the petition, finding Walmart time-barred and no exceptional circumstances justifying joinder.

    RulingsDirector review decision
    • PTAB / AIA Trials › §315(b) time barInstitution denied time barDecided for patent owner

      “In particular, Petitioner was served with a complaint alleging infringement of the challenged patent on September 15, 2023. DD Req. 12. Petitioner waited until March 28, 2025 to file this Petition, more than eighteen months later. Thus, Petitioner is time-barred under 35 U.S.C. § 315(b) from filing a petition. Petitioner seeks to join a recently instituted inter partes review filed by Home Depot U.S.A., Inc. Paper 3 (motion to join to IPR2024-01316). However, petitions filed by time-barred parties should proceed only in exceptional circumstances. Realtek Semiconductor Corp. v. ParkerVision, Inc., IPR2025-00324, Paper 11 at 3 (Director June 25, 2025). Petitioner does not persuasively demonstrate exceptional circumstances here. For example, Petitioner argues that Patent Owner requested consolidation of its district court proceedings against Petitioner and Home Depot; that an initial district court proceeding was dismissed for standing, causing delays; and that the parallel district court proceeding is stayed. Paper 18, 3. However, Petitioner fails to persuasively demonstrate that these circumstances are exceptional and justify the joinder of a time-barred party. Accordingly, discretionary denial is appropriate under these circumstances.” slip op. at 2

    • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied

      “infringement of the challenged patent on September 15, 2023. DD Req. 12. Petitioner waited until March 28, 2025 to file this Petition, more than eighteen months later. Thus, Petitioner is time-barred under 35 U.S.C. § 315(b) from filing a petition. Petitioner seeks to join a recently instituted inter partes review filed by Home Depot U.S.A., Inc. Paper 3 (motion to join to IPR2024-01316). However, petitions filed by time-barred parties should proceed only in exceptional circumstances. Realtek Semiconductor Corp. v. ParkerVision, Inc., IPR2025-00324, Paper 11 at 3 (Director June 25, 2025). Petitioner does not persuasively demonstrate exceptional circumstances here. For example, Petitioner argues that Patent Owner requested consolidation of its district court proceedings against Petitioner and Home Depot; that an initial district court proceeding was dismissed for standing, causing delays; and that the parallel district court proceeding is stayed. Paper 18, 3. However, Petitioner fails to persuasively demonstrate that these circumstances are exceptional and justify the joinder of a time-barred party. Accordingly, discretionary denial is appropriate under these circumstances.” 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 Petition is denied under 35 U.S.C. § 314(a).” slip op. at 3

    Discretionary denial
    Patents in suitUS 10,594,823
  • PTAB · Jul 16, 2025 · IPR2025-00551 · APJ Coke Morgan Stewart · IPR · Director review

    The Director granted Patent Owner’s discretionary-denial requests and denied institution under § 314(a), citing settled expectations and the real party in interest’s role in obtaining and maintaining the patents.

    RulingsDirector review decision
    • Settled expectationsInstitution denied settled expectationsDenied

      “In particular, the challenged patents have been in force for more than 13 years, creating strong settled expectations, and Petitioner does not provide any persuasive reasoning why an inter partes review is an appropriate use of Board resources. Dabico Airport Sols. Inc. v. AXA Power ApS, IPR2025-00408, Paper 21 at 2–3 (Director June 18, 2025).” slip op. at 2

    • PTAB / AIA Trials › Real party in interest / privityInstitution denied rpiDenied

      “Furthermore, Patent Owner presents evidence that Petitioner’s real party in interest (and now wholly owned subsidiary2) controlled prosecution of and maintained the involved patents, and paid “millions of dollars in royalties.” DD Req. 18–19; Ex. 2002 ¶ 88; Ex. 2001 § 2.2; Paper 1, iv (identifying Maxim Integrated Products, Inc. as a real party in interest). It is not an appropriate use of Office resources where a party or its real party in interest applied for and was issued a patent, but, as is the case here, now advocates for its unpatentability.” slip op. at 2

    • Director reviewDirector review, deniedDenied

      “After considering the parties’ arguments and the record, and in view of all relevant considerations, discretionary denial of institution is appropriate in these proceedings. This determination is based on the totality of the evidence and arguments the parties have presented.” slip op. at 2

    Discretionary denial
    Patents in suitUS 7,812,665
  • PTAB · Jul 16, 2025 · IPR2025-00550 · APJ Coke Morgan Stewart · IPR · Director review

    The Director granted Patent Owner’s discretionary-denial requests and denied the petitions under § 314(a), so no trial was instituted.

    RulingsDirector review decision
    • Settled expectationsInstitution denied settled expectationsInstitution denied

      “In particular, the challenged patents have been in force for more than 13 years, creating strong settled expectations, and Petitioner does not provide any persuasive reasoning why an inter partes review is an appropriate use of Board resources. Dabico Airport Sols. Inc. v. AXA Power ApS, IPR2025-00408, Paper 21 at 2–3 (Director June 18, 2025).” slip op. at 2

    • PTAB / AIA Trials › Real party in interest / privityInstitution denied rpiInstitution denied

      “Furthermore, Patent Owner presents evidence that Petitioner’s real party in interest (and now wholly owned subsidiary2) controlled prosecution of and maintained the involved patents, and paid “millions of dollars in royalties.” DD Req. 18–19; Ex. 2002 ¶ 88; Ex. 2001 § 2.2; Paper 1, iv (identifying Maxim Integrated Products, Inc. as a real party in interest). It is not an appropriate use of Office resources where a party or its real party in interest applied for and was issued a patent, but, as is the case here, now advocates for its unpatentability.” slip op. at 2

    Discretionary denial
    Patents in suitUS 7,973,596
  • PTAB · Feb 18, 2025 · IPR2024-01264 · APJ Matthew S Meyers · IPR · Institution

    The Board denied institution of review of claims 1–24 as time-barred under § 315(b), and denied joinder as moot because the Shenzhen IPR had terminated.

    RulingsInstitution decision
    • PTAB / AIA Trials › §315(b) time barInstitution denied time barDenied

      “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.” There is no dispute that Patent Owner served Petitioner with a complaint alleging infringement of the ’808 patent on March 15, 2023. See Mot. 2 (Mountain Voyage identifying March 15, 2023 as the date it was served with Patent Owner’s complaint in the United States District Court of Colorado). There is also no dispute that Mountain Voyage filed the instant Petition more than one year later on August 6, 2024. Pet. 91. Therefore, the evidence in this record shows that Mountain Voyage’s Petition was filed more than 1 year after the date on which Mountain Voyage was served with a complaint alleging infringement of the ’808 patent. Mountain Voyage relies on its request to join the Shenzhen IPR to avoid the time bar of 35 U.S.C. § 315(b). Mot. 1 (“This Motion for Joinder and the accompanying Instant Petition are timely being filed within one month of the decision to institute trial in the Shenzhen IPR.”). The Shenzhen IPR, however, has been terminated. Shenzhen IPR Termination 3–4. Thus, there no longer is a pending proceeding in the Shenzhen IPR for Petitioner to join. Accordingly, Petitioner’s request to join the Shenzhen IPR is moot, and the Petition is not timely under 35 U.S.C. § 315(b).” slip op. at 8

    • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied

      “Mountain Voyage relies on its request to join the Shenzhen IPR to avoid the time bar of 35 U.S.C. § 315(b). Mot. 1 (“This Motion for Joinder and the accompanying Instant Petition are timely being filed within one month of the decision to institute trial in the Shenzhen IPR.”). The Shenzhen IPR, however, has been terminated. Shenzhen IPR Termination 3–4. Thus, there no longer is a pending proceeding in the Shenzhen IPR for Petitioner to join. Accordingly, Petitioner’s request to join the Shenzhen IPR is moot, and the Petition is not timely under 35 U.S.C. § 315(b). III. CONCLUSION The Motion for Joinder is denied as moot because the Shenzhen IPR” slip op. at 8

    Discretionary denial
    Patents in suitUS 10,791,808
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