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  • PTAB · Jun 25, 2025 · IPR2024-01280 · APJ Jo-Anne M Kokoski · IPR · Remand

    On remand, the Board denied institution under § 314(a), finding the Fintiv factors favored denial despite declining to deny under § 325(d).

    RulingsRemand decision
    • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for petitioner

      “Other than initials on a lengthy IDS, nothing in the record indicates that the Examiner substantively considered Takeuchi, Kim, Pienemann, or among over 1,000 other references listed on the IDS, which, as noted in the Director Review Decision, “is over 40 times the size of a typical IDS.” Pet. Remand Br. 5–6; DR Dec. 7 n.3 (citing Setting and Adjusting Patent Fees During Fiscal Year 2025, 89 FR 91898 at 91924 (Nov. 20, 2024)); Ex. 1002, 228–284. Petitioner also shows that the applicant did not respond to the Examiner’s request that the applicant specifically point out “any particular reference or portion of a reference in the [IDS] which the examiner should take [sic] pay particular attention to.” Ex. 1002, 174, 295– 302.” slip op. at 13

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

      “Patent Owner is likely correct that the ITC would not have been inclined to grant a stay if one had been requested at the time the Institution Decision issued. Moreover, the ITC conducted a full evidentiary hearing a month after the Institution Decision issued, and the target date for the ITC’s final determination is several months before the projected statutory deadline for the Board’s final written decision. PO Remand Br. 7. Accordingly, we determine that Fintiv factor 1 weighs in favor of discretionary denial. See also Klein Tools, Inc. v. Milwaukee Electric Tool Corp., IPR2024-01400, Paper 22 at 2 (PTAB June 9, 2025) (Acting Director Stewart determining that Fintiv factor 1 weighs in favor of discretionary denial when the ITC investigation is unlikely to be stayed, the ITC already conducted a full evidentiary hearing, and the ITC final determination is expected to issue six months before the statutory deadline for the Board’s final written decision).” slip op. at 19

    Discretionary denialcites Phillips
    Patents in suitUS 11,925,202
  • PTAB · Jun 25, 2025 · IPR2024-01406 · APJ Jo-Anne M Kokoski · IPR · Remand

    On remand, the Board denied institution of review of claims 1, 3, 4, 8–13, and 15 under § 314(a), finding the Fintiv factors favored discretionary denial.

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

      “stay or evidence exists that one may be granted if a proceeding is instituted.” Fintiv, Paper 11 at 6. A stay of litigation pending resolution of an inter partes review allays concerns about inefficiency and duplication of efforts, and strongly weighs against exercising our authority to deny institution. Fintiv, Paper 11 at 6. The Guidance Memo states that “the Board will apply the Fintiv factors when there is a parallel proceedings at the International Trade Commission.” Guidance Memo 2. Patent Owner asserts that a stay of the ITC Investigation had not been requested at the time of the Institution Decision,7 and argues that “the ITC does not stay investigations pending IPR.” PO Supp. Br. 4. Patent Owner also notes that the Institution Decision issued “just days before the ITC evidentiary hearing.” Id. Accordingly, Patent Owner argues that this factor favors denial. Id. Patent Owner is likely correct that the ITC would not have been inclined to grant a stay if one had been requested at the time the Institution Decision issued. Moreover, the ITC conducted a full evidentiary hearing less than three weeks after the Institution Decision issued, and the target date for the ITC’s final determination is four months before the statutory deadline for the Board’s final written decision. PO Supp. Br. 5. Accordingly, we” slip op. at 9

    Discretionary denial
    Patents in suitUS 11,925,202
  • PTAB · Jun 6, 2025 · IPR2025-00065 · APJ Brian D Range · IPR · Institution

    The Board denied institution of IPR challenging claims 1–44 under § 314(a), finding the Fintiv factors favoring denial outweighed the Petition’s strong merits.

    RulingsInstitution decision
    • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied

      “stipulation would only eliminate the District Court’s consideration of Haddad204. Despite the stipulation, the District Court would still have to consider invalidity of every claim the Petition addresses and would still have to consider the Alie, Baggenstoss, and Park references. Cf. Stellar at 4 (“Petitioner’s invalidity arguments in the district court are more expansive and include combinations of the prior art asserted in these proceedings with unpublished system prior art, which Petitioner’s stipulation is not likely to moot.”). In other words, “Petitioner’s stipulation does not ensure that [this proceeding] would be a ‘true alternative’ to the district court proceeding.” Id. at 3–4. Because of the remaining overlap between the Petition and the District Court proceeding, Fintiv factor four weighs strongly in favor of discretionary denial.” slip op. at 15

    • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundOther

      “for back side illumination (BSI), which appears to teach or suggest a textured region with surface features “located on the light incident side of the semiconductor layer and configured to interact with incident [EMR].” Pet. 22–27 (citing Ex. 1006, Fig. 5, ¶¶ 53, 68, 96; Ex. 1004 ¶¶ 39–40, 88–95, 101–107). As Petitioner and its expert explain, a person of ordinary skill in the art would have been motivated to modify Figure 5 of Alie into a BSI device because BSI devices allow more incident light to reach the semiconductor layer, resulting in more light being absorbed, an increase in the quantum efficiency, and an improvement in the signal to noise ratio. Pet. 25–26 (citing Ex. 1006 ¶¶ 68, 70; Ex. 1004 ¶¶ 39–40, 92, 95). Patent Owner argues that Alie does teach, suggest, or disclose “a textured region comprising a plurality of shallow trench isolation features.” Prelim. Resp. 9–11. But it appears Petitioner has at least shown Alie teaches or suggests this element. See discussion supra. Patent Owner further argues that Petitioner fails to present any proof that a person of ordinary skill in the art would have been motivated to modify Figure 5 of Alie into a BSI device. Id. at 11–15. But, in our view, Petitioner has provided an adequate motivation to modify Alie—so that more light will be absorbed, yielding an increase in the quantum efficiency and an improvement in the signal to noise” slip op. at 18

    • Parallel petitionsNot reached

      “17 Petitioner filed petitions for IPR2025-00064 and IPR2025-00065 at the same time. Both petitions address the ’682 patent but apply different art. Patent Owner also argues the second petition (IPR2025-00065) should be denied because one petition is sufficient. Patent Owner’s Response to Petitioner’s Notice Ranking Parallel Petitions, Paper 11. Because we deny institution based on Fintiv discretion, it is not necessary to reach Patent Owner’s multiple petition argument.” slip op. at 20

    § 103 obviousnessDiscretionary denialcites KSR
    Patents in suitUS 10,347,682
  • PTAB · Jun 6, 2025 · IPR2025-00064 · APJ Brian D Range · IPR · Institution

    The Board denied institution of IPR challenging claims 1–44 under § 314(a), finding the Fintiv factors favoring denial outweighed the petition’s strong merits.

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

      “arguments, and evidence presented in the parallel proceeding.” Fintiv at 12 (emphasis added). “[A] timely-filed Sotera stipulation . . . from a petitioner”—“that, if an IPR . . . is instituted, the petitioner will not pursue in district court . . . any ground raised or that could have been reasonably raised in the IPR”—“is highly relevant, but will not be dispositive by itself. Instead, the Board will consider such a stipulation as part of its holistic analysis under Fintiv.” March 2025 Fintiv Guidance 2–3. Here, Petitioner’s invalidity contentions in the district court case cover” slip op. at 14

    • Parallel petitionsNot reached

      “18 Petitioner filed petitions for IPR2025-00064 and IPR2025-00065 at the same time. Both petitions address the ’682 patent but apply different art. Patent Owner also argues the second petition (IPR2025-00065) should be denied because one petition is sufficient. Patent Owner’s Response to Petitioner’s Notice Ranking Parallel Petitions, Paper 11. Because we deny institution based on Fintiv discretion, it is not necessary to reach Patent Owner’s multiple petition argument.” slip op. at 22

    Discretionary denialcites KSR
    Patents in suitUS 10,347,682
  • PTAB · Jun 6, 2025 · IPR2025-00084 · APJ Barbara A Parvis · IPR · Institution

    The Board denied institution of review of claims 1–12 under § 314(a), finding that holistic Fintiv balancing favored denial because of the early district court trial and substantial investment.

    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. Fintiv at 5–6. “These factors relate to whether efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding.” Id. at 6. In evaluating these factors, we take “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Id. (citing Patent Trial and Appeal Board Consolidated Trial Practice Guide (November 2019), 58).5” slip op. at 9

    Discretionary denial
    Patents in suitUS 11,219,000
  • PTAB · Jun 3, 2025 · IPR2025-00252 · APJ John A Hudalla · IPR · Institution

    The Board denied institution because the petition did not show a reasonable likelihood of proving claims 8–23 obvious over any asserted combination.

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

      “review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2024); Paper 8 (referral to panel after no discretionary denial briefing under the Interim Processes memorandum). 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 do not institute an inter partes review.” slip op. at 2

    • Skill levelSkill level patent owner adoptedDecided for patent owner

      “ordinary skill in the art (“POSA”) “would have had at least a bachelor’s degree, or equivalent, in electrical engineering, computer engineering, computer science, or a related field or an equivalent number of years of working experience, and one to two years of experience in networking environments, including at least some experience with live-streaming network architecture.” Pet. 16–17 (citing Ex. 1001 ¶¶ 78–82). Patent Owner contends that an ordinarily skilled artisan “would have [had] a bachelor’s degree in electrical engineering, computer engineering, computer science, or equivalent degree and, in addition, approximately two years of work experience with Internet video streaming, Internet communication, and related protocols.” Prelim. Resp. 20–21 (citing Ex. 2001 § IV.C). The differences between the parties’ definitions are minor, as recognized by Dr. Rubin (see Ex. 2001 ¶ 104), and we do not discern any meaningful differences based on the preliminary record. Accordingly, for purposes of this Decision, we adopt Patent Owner’s definition of the level of ordinary skill in the art. On the present record, we are satisfied that this definition of the level of skill is consistent with the teachings of the ’088 patent and the asserted prior art. Notwithstanding, we would reach the same determination under Petitioner’s formulation of the level of skill.” slip op. at 10

    • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

      “For purposes of this Decision, we determine that no aspects of the challenged claims require explicit construction. See, e.g., Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 12

    • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundDecided for patent owner

      “obviousness contentions based on Ellis and Spivey rely expressly on the use of a “known webserver” to perform the “transmitting first instructions” limitations excerpted above. See Pet. 28–34. Yet Petitioner does not specify how such a webserver would be integrated with the other elements from Ellis and Spivey cited by Petitioner. At best, Petitioner provides a background section on the known use of webservers (see id. at 11 (citing Ex. 1001 ¶¶ 49–53, 127–134)), but this does not provide a rationale for integrating a webserver in the Ellis–Spivey combination. We also have considered Petitioner’s cited testimony from Dr. Wicker supporting this background section. The first cited portion, which is located at paragraphs 49–53 of Dr. Wicker’s declaration, supports the premises in the background section, but does not include a rationale for adding a webserver to the Ellis– Spivey combination. See Ex. 1001 ¶¶ 49–53. The second cited portion, which is located at paragraphs 127–134 of Dr. Wicker’s declaration, includes a rationale for modifying the Ellis–Spivey combination to include a webserver.3 See Ex. 1001 ¶¶ 127–134. But that rationale is completely 3 The cited rationale in Dr. Wicker’s declaration appears to be tailored to support Petitioner’s obviousness contentions in IPR2025-00251, where unaddressed in the Petition. We decline to assume that Petitioner adopts Dr. Wicker’s testimony about the rationale as its position, because that would amount to improper incorporation by reference under 37 C.F.R. § 42.6(a)(3). See Patent Trial and Appeal Board Consolidated Trial Practice Guide at 35–36 (Nov. 2019), available at https://www.uspto.gov/sites/ default/files/documents/tpgnov.pdf (citing Cisco Systems, Inc. v. C-Cation Techs., LLC, IPR2014-00454 (PTAB Aug. 29, 2014) (Paper 12) (informative)) (stating that “parties that incorporate expert testimony by reference in their petitions, motions, or replies without providing explanation of such testimony risk having the testimony not considered by the Board”).” slip op. at 18

    Claim construction§ 103 obviousnesscites Phillips · Graham
    Patents in suitUS 11,871,088
  • PTAB · Jun 3, 2025 · IPR2025-00251 · APJ John A Hudalla · IPR · Institution

    The Board denied institution on all challenged claims because neither asserted obviousness combination showed a reasonable likelihood of success, chiefly due to unsupported webserver teachings and motivation.

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

      “c. Analysis We are not persuaded by Petitioner’s rationale for adding a facilitator- type webserver to the Ellis–Spivey combination based on “POSA’s Knowledge.” First, Petitioner’s combination of Spivey with Ellis is already allegedly based on improving latency issues via the incorporation of Spivey’s LDSD and MQSD in Ellis’s system. See Pet. 22–24. Petitioner touts that this modification would result in reduced latency to a time period “at least two orders of magnitude shorter than conventional time periods of legacy devices.” Id. at 23 (citing Ex. 1017 ¶ 96). But the Petition does not establish whether this latency improvement would or could be maintained when adding a separate webserver, as it has proposed. And Dr. Rubin testifies that the inclusion of an additional webserver—an additional component—is likely to create latency insofar as it must receive, process, and/or handle data. Ex. 2001 ¶ 305. We are persuaded by Dr. Rubin’s testimony, and we find that adding a webserver to Petitioner’s existing Ellis– Spivey combination tends to undermine Petitioner’s foundational rationale for combining these references, which is the reduction of latency. See Pet. 23.” slip op. at 22

    • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

      “Third, we agree with Patent Owner (Prelim. Resp. 49) that Petitioner does not explain sufficiently why an ordinarily skilled artisan would have added a facilitator-type webserver to the Ellis–Spivey combination when neither reference teaches or suggests a webserver for facilitating communication between a client and a socket server. Dr. Wicker’s supporting testimony stresses that “webservers were well-known components in streaming systems that were useful for facilitating communication between client devices and socket servers, and client devices and media sources.” Ex. 1001 ¶¶ 128–132. But “obviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.” Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015). Petitioner fails to provide any persuasive reason with a rational underpinning why an ordinarily skilled artisan would have been motivated to add a webserver to the existing Ellis–Spivey combination.” slip op. at 24

    • Skill levelSkill level patent owner adoptedDecided for patent owner

      “The differences between the parties’ definitions are minor, as recognized by Dr. Rubin (see Ex. 2001 ¶ 104), and we do not discern any meaningful differences based on the preliminary record. Accordingly, for purposes of this Decision, we adopt Patent Owner’s definition of the level of ordinary skill in the art. On the present record, we are satisfied that this definition of the level of skill is consistent with the teachings of the ’088 patent and the asserted prior art. Notwithstanding, we would reach the same determination under Petitioner’s formulation of the level of skill.” slip op. at 11

    • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

      “Petitioner contends that all claim terms should be given their plain and ordinary meaning. Pet. 8. Petitioner also argues that an ordinarily skilled artisan would have known that a “socket” is “a uniquely addressable communication endpoint on a server where first event information is provided to a VCD [viewer client device].” Id. at 34 (citing Ex. 1001 ¶ 163). Thus, Petitioner argues that a “first event socket corresponding to the first event information” is “a socket where information about one sporting event is provided to VCDs.” Id. Patent Owner states that “[e]xcept for the ‘socket’ term for which Patent Owner applies Petitioner’s construction . . . for purposes of [its] preliminary response, Patent Owner agrees that no terms require construction and construes all other terms consistent with their plain and ordinary meaning.” Prelim. Resp. 20–21. For purposes of this Decision, we determine that no aspects of the challenged claims require explicit construction. See, e.g., Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 12

    Claim construction§ 103 obviousnesscites Phillips · Graham
    Patents in suitUS 11,871,088
  • PTAB · May 21, 2025 · IPR2025-00161 · APJ Monica S Ullagaddi · IPR · Institution

    The Board denied institution of IPR challenging claims 1–18 under § 314(a), concluding that the Fintiv factors, viewed holistically, favored discretionary denial.

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

      “The standard for institution is set forth in 35 U.S.C. § 314, which provides that an inter partes review may not be instituted unless the information presented 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.” 35 U.S.C. § 314 (2019); see also 37 C.F.R § 42.4(a) (2019) (“The Board institutes the trial on behalf of the Director.”). Upon consideration of the parties’ contentions and the evidence of record, we exercise our discretion to deny institution.” slip op. at 2

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

      “view of a parallel proceeding, we consider the following factors: 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 7 Japanese Unexamined Patent Application Publication No. 2009–188316 A, published Aug. 20, 2009 (Ex. 1011). A certified translation, to which we cite, is provided (Ex. 1012, “Yamada”). 8 E. Fred Schubert, LIGHT-EMITTING DIODES, 2nd ed., 163–190, 2006 (Ex. 1013, “Schubert”). discretion, including the merits. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5–6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”). “These factors relate to whether efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding.” Id. In evaluating these factors, we “take[] a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Id. at 6. We consider each of these factors below.” slip op. at 4

    Discretionary denial
    Patents in suitUS 11,721,714
  • PTAB · Apr 25, 2025 · IPR2025-00036 · APJ Kristen L Droesch · IPR · Institution

    The Board denied institution of IPR challenging claims 1–18, exercising § 314(a) discretion under Fintiv because the parallel district court case favored efficient and timely resolution.

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

      “We are not swayed by Petitioner’s speculation as to the trial date for the parallel district court proceeding as well as arguments regarding trial dates for the other two district court proceedings. Due to the actual trial date of the parallel district court proceeding having been set to occur more than seven months before an expected final written decision in this proceeding, as well as a projected trial date based on time-to-trial statistics of more than six months before an expected final written decision, we determine that the considerations of the second Fintiv factor weigh in favor of exercising discretion to deny institution of inter partes review.” slip op. at 11

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

      “factors. Because the analysis is fact-driven and we take a holistic view of the factors, no single factor is determinative of whether we exercise discretion to deny institution under § 314(a). The parallel district court trial date set more than six months before an expected final written decision and the significant investment by the court and parties in the parallel district court proceeding weigh in favor of exercising discretion to deny institution of inter partes review. Petitioner’s stipulation, however, allays to some extent concerns regarding duplication of efforts and the possibility of conflicting decisions and weighs against exercising discretion to deny institution of inter partes review. Of the remaining factors, we find only that Petitioner and defendant being the same to weigh in favor exercising discretion to deny institution of inter partes review. After careful consideration and holistically balancing all of the considerations of the Fintiv factors, on this record, we determine that the evidence before us warrants exercising discretion to deny institution of inter partes review. III. CONCLUSION We exercise discretion under 35 U.S.C. § 314(a) to deny institution of inter partes review. IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that the Petition is denied, and no trial is instituted.” slip op. at 18

    Discretionary denial
    Patents in suitUS 11,627,631
  • PTAB · Apr 25, 2025 · IPR2025-00037 · APJ Kevin W Cherry · IPR · Institution

    The Board denied institution of inter partes review of claims 1, 2, 4, 8, 9, and 11, exercising discretion under § 314(a) based on the Fintiv factors.

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

      “the parallel district court proceeding as well as arguments regarding potential trial dates for the other two district court proceedings. Due to the actual trial date of the parallel district court proceeding having been set to occur more than seven months before an expected final written decision in this proceeding, as well as a projected trial date based on time-to-trial statistics of more than six months before an expected final written decision, we determine that the considerations of the second Fintiv factor weigh in favor of exercising discretion to deny institution of inter partes review.” slip op. at 10

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

      “Accordingly, we determine that the evidence of record favors exercising our discretion under 35 U.S.C. § 314(a) to deny institution of an inter partes review. III. CONCLUSION For the foregoing reasons, the evidence of record favors exercising our discretion to deny institution of an inter partes review under 35 U.S.C. § 314(a). IV. ORDER It is ORDERED that the Petition is denied, and no trial is instituted.” slip op. at 16

    Discretionary denial
    Patents in suitUS 10,616,932
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