- PTAB · Jan 14, 2026 · IPR2025-00632 · APJ Mitchell G Weatherly · IPR · Remand
On remand, the Board reinstituted review of all challenged claims on all grounds after finding Petitioner sufficiently explained its differing claim-construction positions.
RulingsRemand decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Id. The Director neither addressed the merits of Petitioner’s challenges nor found that our prior consideration of those merits was faulty. Accordingly, we understand that we need not reconsider our conclusion that Petitioner had demonstrated a reasonable likelihood of proving that claims 1, 2, 7–9, 11, 12, and 20–24 were unpatentable or that the merits of patentability set forth in the Petition warranted institution of inter partes review.” slip op. at 5
- BurdenDecided for petitioner
“The question before us, therefore, is whether the Petitioner’s proffered explanation that it has proposed a different claim interpretation before the Board because the District Court may decline to adopt the narrower claim interpretations it advocates there is sufficient. We find that Petitioner’s explanation is sufficient because it follows the Director’s exemplary logic. Whether a district court has already or might in the future decline to adopt constructions that a petitioner proposes in related district court litigation merely reflects the timing of when a dispute over claim interpretation will be resolved. The Director and Patent Owner both recognize that, to resolve the dispute over claim interpretation that exists here, a decision-maker must determine “a single claim construction that best captures the true meaning of the patent claim.” Remand 4; PO Remand Br. 3. Based on the record presented by the parties to date in this proceeding, no dispute exists that the disputed claim terms mean what Patent Owner says they mean in the Litigation. Accordingly, we find that, at this stage of the proceeding, it is undisputed that Patent Owner’s interpretations of the claim terms represent the “single claim construction that best captures the true meaning of the patent claim.”8 Under that claim interpretation, we” slip op. at 8
NonePatents in suitUS 11,835,421 - 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 PhillipsPatents 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 denialPatents in suitUS 11,925,202 - PTAB · Oct 31, 2014 · IPR2014-00323 · APJ Brian J Mcnamara · IPR · Order
The Board granted the parties’ joint motion and terminated the proceeding under their settlement without issuing a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Paper 10. Patent Owner has not yet filed a Patent Owner Response and the parties have not taken any discovery. Paper 20, 1. In a telephone conference on October 23, 2014, the parties confirmed that there are no other written or verbal agreements between them concerning the patent that is the subject of this proceeding. Under these circumstances, the Board determines that it is appropriate to enter judgment1 and terminate the trial without rendering a final written decision. 37 C.F.R. § 42.72. It is, therefore, ORDERED that the joint motion to terminate the proceeding is GRANTED and the proceeding is hereby terminated; FURTHER ORDERED that the parties’ joint request that the settlement agreement be treated as business confidential information which shall be kept separate from the file of the involved patents under the provisions of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), is GRANTED.” slip op. at 2
NonePatents in suitUS 8,220,959 - PTAB · Jun 11, 2014 · IPR2014-00362 · APJ Sally C Medley · IPR · Order
The Board granted the parties’ joint motion to terminate the proceeding before institution and granted their request to keep the settlement agreement confidential.
RulingsOther- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingGranted
“§ 42.74, the parties filed a true copy of a settlement agreement along with a joint request to treat the settlement agreement as business confidential, to be kept separate from the patent file. In addition, the parties filed a joint motion to terminate the proceeding pursuant to 35 U.S.C. § 317. This case is in the preliminary proceeding1 stage; no institution of a trial has been made. Based on the facts of this case, it is appropriate to enter judgment.2 Therefore, the joint motion to terminate the proceeding is granted.” slip op. at 1
NonePatents in suitUS 6,306,141 - PTAB · Mar 31, 2014 · IPR2013-00241 · APJ Brian J Mcnamara · IPR · Order
The Board granted the parties’ joint motion and terminated the proceeding by settlement without a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Under these circumstances, we determine that it is appropriate to enter judgment1 and to terminate the trial without rendering a final written decision. 37 C.F.R. § 42.72. It is, therefore, ORDERED that the joint motion to terminate the proceeding is GRANTED and the proceeding is hereby terminated; and FURTHER ORDERED that the parties’ joint request that the settlement agreement be treated as business confidential information which shall be kept separate from the file of the involved patents under the provisions of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), is GRANTED.” slip op. at 3
NonePatents in suitUS 6,370,954 - PTAB · Mar 31, 2014 · IPR2013-00254 · APJ Brian J Mcnamara · IPR · Order
The Board granted the parties’ joint motion to terminate the proceeding and their request to keep the settlement confidential, without issuing a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“It is, therefore, ORDERED that the joint motion to terminate the proceeding is GRANTED, and the proceeding is hereby terminated; and FURTHER ORDERED that the parties’ joint request that the settlement agreement be treated as business confidential information which shall be kept separate from the file of the involved patents under the provisions of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), is GRANTED.” slip op. at 3
NonePatents in suitUS 6,034,419 - PTAB · Mar 11, 2014 · IPR2013-00244 · APJ Brian J Mcnamara · IPR · Order
The Board granted the parties’ joint motion to terminate the instituted proceeding after settlement, without issuing a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“2013. Paper 12. However, this matter was in the preliminary stages at the time the parties moved to terminate and a Patent Owner Response has not yet been filed. In the Motion To Terminate, the parties indicate that there are no current litigations involving the subject U.S. Patent No. 8,419,214 B2. Under these circumstances, the Board determines that it is appropriate to enter judgment1 and terminate the trial without rendering a final written decision. 37 C.F.R. § 42.72. It is, therefore, ORDERED that the joint motion to terminate the proceeding is GRANTED and the proceeding is hereby terminated; FURTHER ORDERED that the parties’ joint request that the settlement agreement be treated as business confidential information which shall be kept separate from the file of the involved patents under the provisions of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), is GRANTED.” slip op. at 2
NonePatents in suitUS 8,419,214 - PTAB · Mar 11, 2014 · IPR2013-00238 · APJ Brian J Mcnamara · IPR · Order
The Board granted the parties’ joint motion, terminated the proceeding after settlement, and did not issue a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“to a settlement. On February 25, 2014, the Board authorized the parties to file a Joint Request To Terminate and a Joint Request to File the Settlement as Business Confidential under 37 C.F.R. 42.74(c). Paper 24. On February 27, 2014, the parties filed a Joint Motion Terminate and a Joint Request To Keep Paper Separate as Business Confidential Information. Paper 25. See 35 U.S.C. § 317; 37 C.F.R. § 42.72. With their Motion To Terminate and Seal, the parties also filed a copy of a written settlement agreement. Ex. 2009.” slip op. at 2
NonePatents in suitUS 8,220,959 - PTAB · Jul 22, 2013 · IPR2013-00216 · APJ Joni Y Chang · IPR · Order
The Board granted the parties’ joint motion and terminated the proceeding before institution.
RulingsOther- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Other
“Generally, the Board expects that a proceeding will terminate after the filing of a settlement agreement. See, e.g., Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14, 2012). Applied Voice & Speech Technologies, Inc. (“AVST”) filed a petition for an inter partes review on March 26, 2013. (Paper 1.) The Board has not authorized institution of the inter partes review. As no trial has been instituted based on AVST’s petition, this proceeding is in the preliminary proceeding1 stage. Based on the facts of this case, it is appropriate to enter judgment.2” slip op. at 2
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“On July 19, 2013, the parties filed a joint motion to terminate the instant proceeding accompanied by a true copy of a settlement agreement and a joint request to treat the settlement agreement as business confidential, pursuant to 35 U.S.C. § 317 and 37 C.F.R. § 42.74. (Papers 14 and 15; Ex. 2001.) The parties indicate that they have reached an agreement resolving the dispute in the instant proceeding and the related litigation. (Paper 14.) They also filed a copy of the Agreed Motion to Dismiss with Prejudice the related litigation. (Ex. 2002.) The Motion was granted and, as the result, the related litigation was dismissed on July 8, 2013. (Paper 14.) The parties urge the Board to terminate the instant proceeding, as the proceeding is in its preliminary stage and neither party has had an opportunity to present evidence and arguments. (Id.) Generally, the Board expects that a proceeding will terminate after the filing of a settlement agreement. See, e.g., Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14, 2012). Applied Voice & Speech Technologies, Inc. (“AVST”) filed a petition for an inter partes review on March 26, 2013. (Paper 1.) The Board has not authorized institution of the inter partes review. As no trial has been instituted based on AVST’s petition, this proceeding is in the preliminary proceeding1 stage. Based on the facts of this case, it is appropriate to enter judgment.2” slip op. at 2
NonePatents in suitUS 5,572,576
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.