- PTAB · Oct 21, 2025 · IPR2025-00749 · APJ Sean P O’Hanlon · IPR · Institution
The Board instituted IPR on claims 1–16 based on the petition’s grounds and granted ZF’s motion to join the Mobileye IPR, subject to participation limits.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Because the grounds of unpatentability in the instant Petition are identical to those in the Mobileye IPR and for the same reasons stated in our Decision to Institute in the Mobileye IPR, we institute inter partes review in this proceeding on the grounds presented in the Petition. See Mobileye IPR, Paper 14 (analyzing challenges in the Mobileye Petition).” slip op. at 5
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“A motion for joinder should (1) set forth reasons why joinder is appropriate; (2) identify any new grounds of unpatentability asserted in the petition; (3) explain what impact (if any) joinder would have on the trial schedule for the existing review; and (4) address specifically how briefing and discovery may be simplified. See Kyocera Corp. v. Softview LLC, IPR2013-00004, Paper 15 at 4 (PTAB Apr. 24, 2013); Patent Trial and Appeal Board Consolidated Trial Practice Guide 76 (Nov. 2019).2 Petitioner’s Motion addresses each of these considerations. Mot. 4–8. According to Petitioner, “the Petition involves the same patent, challenges the same claims, relies on the same expert declaration, and is based on the same grounds and combinations of prior art submitted in the Mobileye Petition” and “does not present any new grounds of unpatentability and is substantively identical to the Mobileye Petition.” Id. at 5. Petitioner argues that, “[b]ecause the Petition is substantively identical to the Mobileye Petition, with the same grounds challenging the same claims as instituted by the Board, there are no new issues for Patent Owner to address” and, therefore, joinder with the Mobileye IPR would “not unduly burden or negatively impact the trial schedule in any meaningful way.” Id. at 6. Further, “Petitioner explicitly agrees to take an ‘understudy’ role in the joined proceeding” and “will assume the primary role only if Petitioner in the Mobileye IPR ceases to participate.” Id. at 7–8 (quoting Noven Pharms., Inc. v. Novartis AG, IPR2014-00550, Paper 38 at 5 (PTAB Apr. 10, 2015).” slip op. at 6
NonePatents in suitUS 9,671,328 - PTAB · Oct 21, 2025 · IPR2025-00748 · APJ Sean P O’Hanlon · IPR · Institution
The Board instituted review of claim 15 under § 103(a) based on Gallagher and Lumia, granted joinder in the Mobileye IPR subject to participation limits, and terminated this proceeding.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Because the grounds of unpatentability in the instant Petition are identical to those in the Mobileye IPR and for the same reasons stated in our Decision to Institute in the Mobileye IPR, we institute inter partes review in this proceeding on the ground presented in the Petition. See Mobileye IPR, Paper 16 (analyzing challenges in the Mobileye Petition).” slip op. at 4
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Under the circumstances outlined above, we agree with Petitioner that joinder is appropriate and will not unduly impact the ongoing trial in the Mobileye IPR. Therefore, we grant Petitioner’s Motion for Joinder.” slip op. at 7
NonePatents in suitUS 9,335,255 - PTAB · May 21, 2024 · IPR2024-00131 · APJ Arthur M Peslak · IPR · Institution
The Board instituted review of claims 1, 3–8, 14, 15, and 18 on all petitioned grounds and granted ecobee’s motion to join the Copeland IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Copeland IPR. Copeland IPR, Paper 12, 2 (PTAB Oct. 2, 2023). Petitioner challenges the same claims and asserts the same grounds of unpatentability as those on which we instituted the Copeland IPR. Mot. 1 (The Petition and” slip op. at 7
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Practice Guide (“CTPG”) for evaluating a joinder motion.8 CTPG 76 (citing Kyocera Corp. v. Softview, LLC, IPR2013-00004, Paper 15, 4 (PTAB April 24, 2013)) and contends the factors weigh in favor of exercising our discretion to join Petitioner as a party to the Copeland IPR. Mot. 4. In evaluating the Motion, we consider the reasons why joinder may be appropriate, whether the Petition presents any new grounds of patentability, the impact, if any, joinder would have on the trial schedule in the Copeland IPR, and how briefing and discovery may be simplified. CTPG 76.” slip op. at 9
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“For this factor, our concerns are the “inefficiency” of addressing “substantially identical prior art arguments that were at issue in the district court” and the resulting “possibility of conflicting decisions.” Fintiv, IPR2020-00019, Paper 11, 12. The Director’s Fintiv Memo is in accord with these concerns. Fintiv Memo at 7 (“[T]he PTAB will not discretionarily deny institution of an IPR . . . in view of parallel district court litigation where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.”). Because there is no possibility of our Final Written Decision in the joined proceeding conflicting with the judgment of the district court, and there will be little, if any, inefficiency or burden on the Board in proceeding with joinder, we find that this factor weighs heavily against exercising our discretion to deny institution/joinder.” slip op. at 14
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for petitioner
“Patent Owner admits that Petitioner has not previously filed a petition for inter partes review of the ’887 patent. Opp. 12. Under Valve Corp. v. Electronic Scripting Products, Inc., IPR2019-00062, Paper 11 (PTAB April 2, 2019) (precedential), General Plastic may apply when parties that have a “significant relationship” file successive petitions against the same patent. Valve Corp., Paper 11 at 10. In Valve, the successive petitioners were found to have a significant relationship because they were “co-defendants in the District Court litigation and were accused of infringing” the patent being challenged before the Board. Id. Patent Owner admits it “is not aware of a close relationship between Petitioner and Copeland Comfort Control LP.” Prelim. Sur-reply 4. In fact, Copeland and Petitioner are not co-defendants. Consequently, there is no “significant relationship” between Petitioner and Copeland. Patent Owner argues that General Plastic Factors 2, 4, and 6 weigh against joinder. Opp. 14. The Director, however, recently determined that where “the first and second petitioners are neither the same party, nor possess a significant relationship under Valve, General Plastic factor one necessarily outweighs the other General Plastic factors” and that “exercising discretion to deny the Petition is not justified.” Videndum Production Solutions, Inc. v. Rotolight Limited, IPR2023-01218, Paper 12, 6–7 (PTAB April 19, 2024) (Decision Granting Director Review). Regardless of whether the other factors weigh against joinder or not, factor one “necessarily outweighs” the other factors. Consequently, we do not exercise discretion to deny institution or joinder in this case based on General Plastic.” slip op. at 17
Discretionary denialPatents in suitUS 7,746,887
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.