- PTAB · Apr 28, 2025 · IPR2025-00013 · APJ Scott Raevsky · IPR · Institution
The Board denied institution of IPR on claims 1–23 under § 314(a), relying on the Fintiv factors and its holistic assessment of the parallel litigation and petition merits.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“the Petition under Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”). Prelim. Resp. 34–41. Fintiv identifies a non-exclusive list of factors we consider when addressing whether a related, parallel district court action provides a basis for discretionary denial under 35 U.S.C. § 314(a). Fintiv, Paper 11 at 5–16. These factors include: 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.” slip op. at 5
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“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(a). Institution of inter partes review, however, is discretionary. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.”). For the reasons discussed below, we exercise discretion under 35 U.S.C. § 314(a) not to institute inter partes review.” slip op. at 2
Discretionary denialPatents in suitUS 11,770,313 - PTAB · Apr 28, 2025 · IPR2025-00012 · APJ Scott Raevsky · IPR · Institution
The Board denied institution of review of claims 1–25 under § 314(a), citing the parallel trial schedule, investment, transfer ruling, and not particularly strong merits.
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. Id. at 5–6. We take “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review” when evaluating these factors. Id. at 6.” slip op. at 5
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“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(a). Institution of inter partes review, however, is discretionary. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.”). For the reasons discussed below, we exercise discretion under 35 U.S.C. § 314(a) not to institute inter partes review.” slip op. at 2
Discretionary denialPatents in suitUS 10,848,398 - PTAB · Apr 17, 2025 · IPR2024-01379 · APJ Kevin C Trock · IPR · Institution
The Board denied institution of review of claim 20, finding that the Fintiv factors favored discretionary denial under § 314(a).
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“(which we address in more detail below) turns on the determination of the meaning of the claim term “periodically.” We note that the District Court has construed the term “periodically monitor” to mean “monitor at regular intervals of time.” See Sec. II.C below. Given this construction, which we preliminarily agree with at this stage, we cannot agree with Petitioner that the Petition presents “a strong case for obviousness.” Thus, we find that Factor 6 weighs in favor of exercising discretionary denial.” slip op. at 16
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“periodically” as it is used in claim 20, with Petitioner arguing that “periodically’ means “repeated . . . over time” and Patent Owner arguing that “periodically” means “at fixed intervals.” See Pet. 25; Prelim. Resp. 8. Our preliminary determination of the ordinary and customary meaning of the term “periodically” as it is used in claim 20 substantially impacts our view of the merits in this case as this issue is the principal one raised by Patent Owner in its Preliminary Response. See Prelim. Resp. 5–22. slip op. at 20
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner’s description of a person of ordinary skill appears consistent with the subject matter of the ’996 patent. This is supported by the testimony of Petitioner’s declarant, Dr. Martin. See Ex. 1002 ¶¶ 55–56. We adopt Petitioner’s assessment of a person of ordinary skill for purposes of this Decision, with the exception of the qualifier “at least,” to keep the description from being vague and extending to a level reflecting that of an expert. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). C. Claim Construction” slip op. at 18
Claim constructionDiscretionary denialcites Phillips · GrahamPatents in suitUS 7,809,996 - Apple Inc. v. Haptic, Inc.Institution deniedPTAB · Apr 4, 2025 · IPR2024-01476 · APJ Andreas Baltatzis · IPR · Institution
The Board denied institution of review of claims 3, 6, 7, 12, and 13, exercising § 314(a) discretion under Fintiv after balancing the parallel litigation factors.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“prejudice to renewal if the PTAB institutes IPR review.” Ex. 2023, 6. A stay denial without prejudice to renew if a PTAB trial is instituted “usually weigh[s] against exercising authority to deny institution.” Fintiv, Paper 11 at 7. But “proximity of the court’s trial date and investment of time are relevant to how much weight to give to the court’s willingness to reconsider a stay.” Id. Although the District Court denied a stay pending the Board’s decision, the court also identified the proximity of the trial date and litigation investment as significant factors in its initial denial of the requested stay. See Ex. 2023, 6. Thus the evidence is inconclusive as to whether or not the District Court would stay the case if we granted institution at this time. Absent a clear indication from the District Court, we decline to predict whether a stay would be granted.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away foundOther
“a sensor in a fixed position relative to a sensing surface to provide a fixed reference point for accurate detection of vibratory signals”), 171 (“the sensor is held in a particular position within the housing and relative to the surface that the housing is mounted to”). Stewart teaches the opposite: a sensor that is vibrated inside a housing to measure rotational movement. Ex. 1006, 5:54–56, 6:5–10, 6:20–31; Ex. 2001 ¶¶ 100, 133, 138. Thus, Stewart’s sensor is flexibly suspended with brackets inside the housing to allow movement and minimize transmission of vibrations from the surface to the sensor. Ex. 1006, 5:7–24, 7:61–64; Ex. 2001 ¶ 102. Petitioner combines Murakoshi with Stewart’s brackets and case mounts to fix the sensor to prevent it from moving within the housing and thus enable the sensor to detect vibrations from outside the housing. See Pet. 24, 33–36. But Stewart’s teachings undermine the very reason proffered by Petitioner, because Stewart’s sensor is movably suspended within the housing so that it does not detect vibrations from outside the housing. See DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1326 (Fed. Cir. 2009) (“An inference of nonobviousness is especially strong where the prior art’s teachings undermine the very reason being proffered as to why a person of ordinary skill would have combined the known elements.”).” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successReasonable expectation not foundOther
“Likewise, we find a significant weakness in Petitioner’s argument for a reasonable expectation of success in the combination. “The reasonable expectation of success requirement refers to the likelihood of success in combining references to meet the limitations of the claimed invention.” Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367 (Fed. Cir. 2016). Claim 1 requires “said sensor being in a fixed position portion” that “set[s] a rigid position of said sensor relative to said mounting surface” (limitation 1e). As discussed above, neither Murakoshi nor Stewart appear to teach a sensor in a fixed position relative to said engagement means or a rigid position relative to said mounting portion. Accordingly, even if Murakoshi’s and Stewart’s teachings were to be combined, the combined teachings would not appear to meet the limitations of the claimed invention.” slip op. at 14
§ 103 obviousnessDiscretionary denialPatents in suitUS 9,996,738 - Apple Inc. v. Haptic, Inc.Institution deniedPTAB · Apr 4, 2025 · IPR2024-01475 · APJ Andreas Baltatzis · IPR · Institution
The Board denied institution of IPR challenging claims 1, 2, 4, 5, and 8–11, exercising its discretion under § 314(a) based on the Fintiv factors.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“litigation, the Board assesses all relevant circumstances, including the merits, to balance considerations such as system efficiency, fairness, and patent quality. See Fintiv, Paper 11; NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 at 19–20 (PTAB Sept. 12, 2018) (precedential). We consider six factors as part of this balanced assessment when determining whether to use our discretion to deny institution: 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, Paper 11 at 5–6. 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. at 6.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot reached
“vibrations on a surface and using the vibrations to generate a control signal for a device. Ex. 1004 ¶¶ 21, 25, 29, 30, 36. To measure vibrations on a surface, Murakoshi’s sensor must be fixed within the housing and held in position relative to the surface. See Ex. 1003 ¶¶ 142 (“it is necessary to hold a sensor in a fixed position relative to a sensing surface to provide a fixed reference point for accurate detection of vibratory signals”), 174 (“the sensor is held in a particular position within the housing and relative to the surface that the housing is mounted to”). Stewart teaches the opposite: a sensor that is vibrated inside a housing to measure rotational movement. Ex. 1006, 5:54–56, 6:5–10, 6:20–31; Ex. 2001 ¶¶ 100, 133, 138. Thus, Stewart’s sensor is flexibly suspended with brackets inside the housing to allow movement and minimize transmission of vibrations from the surface to the sensor. Ex. 1006, 5:7–24, 7:61–64; Ex. 2001 ¶ 102. Petitioner combines Murakoshi with Stewart’s brackets and case mounts to fix the sensor to prevent it from moving within the housing and thus enable the sensor to detect vibrations from outside the housing. See Pet. 23, 31–35. But Stewart’s teachings undermine the very reason proffered by Petitioner, because Stewart’s sensor is movably suspended within the DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1326 (Fed. Cir. 2009) (“An inference of nonobviousness is especially strong where the prior art’s teachings undermine the very reason being proffered as to why a person of ordinary skill would have combined the known elements.”).” slip op. at 14
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Not reached
“We find Petitioner’s argument based on the combination of Li and iFixit to be a closer call than the argument based on Murakoshi and Stewart. However, because we exercise our discretion to deny the Petition in view of the parallel litigation, we need not determine whether Petitioner meets the standard for institution based on the combination of Li and iFixit.” slip op. at 17
§ 103 obviousnessDiscretionary denialPatents in suitUS 9,996,738 - PTAB · Mar 27, 2025 · IPR2025-00004 · APJ Georgianna W Braden · IPR · Institution
The Board instituted IPR on claims 1–7, 9, 11–17, and 19, finding a reasonable likelihood of success on the asserted obviousness challenges.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3)); see also Intelligent Bio-Sys., 821 F.3d at 1369. This burden of persuasion never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review). Therefore, to prevail in an inter partes review, Petitioner must explain how 6 At this stage of the proceeding, Patent Owner has not presented objective evidence of non-obviousness. the proposed combination of prior art would have rendered the challenged claims unpatentable. At this preliminary stage, we determine whether the information presented in the Petition shows there is a reasonable likelihood that Petitioner would prevail in establishing that at least one of the challenged claims would have been obvious over the proposed combinations of prior art. slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Here, Petitioner asserts a person of ordinary skill in the art at the time of the invention of the ’313 patent would have “had a bachelor’s degree in computer science, computer engineering, electrical engineering, or a related field, and 2–3 years of practical engineering experience relating to information security systems that employ cryptographic keys to encrypt/decrypt digital data.” Pet. 9 (citing Ex. 1003 ¶¶ 1–20, 37–41). Mr. Wechselberger supports Petitioner’s position and further testifies that “[a]dditional education could substitute for professional experience, or significant experience in the field could substitute for formal education.” Ex. 1003 ¶ 40. Patent Owner does not assert a different level of skill in the art at the time of the alleged invention and does not dispute Petitioner’s proposed level of skill. Prelim. Resp. 6. For the purposes of this Decision, we adopt Petitioner’s level of ordinary skill in the art because it appears consistent with the problems addressed in the ’313 Patent and the prior art of record.” slip op. at 11
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We also are persuaded based on the current record that Suzuki’s teachings bolster Peterka’s teaching of this limitation. See Ex. 1006 ¶¶ 33, 36, 43–48, 59, 72–77, 80–81, Figs. 4–6. Moreover, we are persuaded that a person of ordinary skill in the art at the critical time would have had reason to apply the teachings of Suzuki to Peterka. Specifically, we credit the testimony of Mr. Wechselberger, who testifies that (1) Peterka and Suzuki are in the same field of art and (2) both references disclose “periodically” changing keys that protect distributed content. Ex. 1003 ¶ 154 (citing Ex. 1006 ¶¶ 3, 12; Ex. 1005 ¶¶ 82, 110). Mr. Wechselberger explains that an ordinarily skilled artisan would have recognized the importance of identifiers “to differentiate amongst keys, and that providing unique values (such as key numbers) to keys would ensure that the system does not confuse keys.” Id. ¶ 153. According to Mr. Wechselberger, an ordinarily skilled artisan “would have had reasons to implement Peterka’s client in view of Suzuki to acquire and use ‘key information’ about a next key—its ‘remaining validity time’ and ‘key number’—at a set time before the expiration of the current key, and thereby facilitate timely key acquisition and use.” Id. ¶ 155 (citing Ex. 1006 ¶¶ 76–77, 80–81, 43–48) (emphasis added). At this stage of the proceeding, and crediting the testimony of Mr. Wechselberger, we are persuaded that the combined teachings of Peterka and Suzuki would have allowed a person of ordinary skill in the art “to ‘eliminat[e] the confirmation delay’ during key changes, and realize Peterka’s embodiment where “each client keeps track of the keys and their expiration times and actively requests new keys before the current keys expire so as to avoid service interruptions.” See Ex. 1006 ¶ 11; Ex. 1005 ¶ 105.” slip op. at 30
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner contends “[n]o claim term requires that the Board adopt an exact outer boundary construction because the prior art relied upon herein meets the claims under any plausible interpretation as detailed [in the Petition.]” Pet. 10. Patent Owner asserts that “[t]he Petition does not raise a dispute as to any claim construction issues” and “Patent Owner does not believe the Board need resolve any claim construction issues at this stage.” Prelim. Resp. 6 (citing Pet. 9–10). Construction is needed only for those terms “that are in controversy, and only to the extent necessary to resolve the controversy.” See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). There are no claim terms in controversy at this stage of the proceeding. Consequently, we need not construe any terms for our analysis.” slip op. at 9
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,122,313 - PTAB · Mar 27, 2025 · IPR2025-00003 · APJ Norman H Beamer · IPR · Institution
The Board instituted IPR on claims 1–8, 10, 12, 14, and 16–20 for all petitioned grounds, finding a reasonable likelihood of prevailing on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the Petition and any 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 explained below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review as to the challenged claims and grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“Petitioner’s expert contends that person of ordinary skill in the art (POSITA): [W]ould have had a bachelor’s degree in computer science, computer engineering, electrical engineering, or a related field, and 2–3 years of practical engineering experience relating to information security systems that employ cryptographic keys to encrypt/decrypt digital data. Additional education could substitute for professional experience, or significant experience in the field could substitute for formal education. Ex. 1003 ¶ 41. Patent Owner does not dispute the Petitioner’s proposal at this time. Prelim. Resp. 8. Based on a review of the record, we adopt Petitioner’s proposed level of ordinary skill in the art because it is consistent with the evidence of record, including the asserted prior art and ’178 patent specification. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“the special case of key changes requested for security reasons outside of any fixed duration lifespan. Ex. 1001, 10:40–42. Considering, as we must, the disclosure of the ’178 patent as a whole, the scope of the disclosure is directed broadly to key rotation in general, whether due to scheduled key expiration times or otherwise. Id. at code (57), Fig. 3, 1:63–65, 2:23–25, 3:26–28, 9:47–49; see also Superguide Corp. v. DirecTV Enter., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“Though understanding the claim language may be aided by explanations contained in the written description, it is important not to import into a claim limitations that are not part of the claim. For example, a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment”).” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundOther
“combine the teachings of Peterka, Suzuki, and Bocharov. Pet. 51–53, 57– 59, 66–67. Petitioner argues that Suzuki, like Peterka, discloses clients acquiring keys for multiple media segments, and provides implementation details, not disclosed in Peterka, regarding how to keep track of keys and their expiration times, and how to determine when a new key is required. Pet. 51–52 (citing Ex. 1003 ¶¶ 161–164). Petitioner argues that, given that Peterka and Suzuki are in the same field of art, one of ordinary skill would have been motivated to use the specific details of Suzuki in implementing the disclosure of Peterka. Id. at 53, 66 (citing Ex. 1003 ¶¶ 165–167, 202–204). Petitioner also argues that Peterka indicates that video content can be streamed using various protocols and bit rates, but does not provide implementation details. Pet. 57–59, 66–67 (citing Ex. 1003 ¶¶ 179–184, 204). However, argues Petitioner, one of ordinary skill in the art would have had reason to use the manifest files of Bocharov to provide the necessary information to handle different protocols and bit rates. Id. Petitioner argues that one of ordinary skill in the art would have been so motivated because implementing Peterka’s system to use Bocharov’s manifests would have provided an effective solution for allowing clients to switch between multiple versions of a media program having different encodings/qualities/bit rates. Id. Patent Owner does not specifically address the merits of combining Peterka, Suzuki, and Bocharov. See generally Prelim. Resp. Nonetheless the burden remains on Petitioner to demonstrate unpatentability. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). For purposes of this Decision, we determine that Petitioner has provided sufficiently articulated reasoning with rational underpinnings for the proffered combined teachings of Peterka, Suzuki, and Bocharov.” slip op. at 29
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,313,178 - Samsung Electronics Co., Ltd / Samsung Electronics America, Inc. v. Secure Wi-Fi LLCInstitution deniedPTAB · Mar 24, 2025 · IPR2024-01369 · APJ Christopher L Ogden · IPR · Institution
The Board denied institution under Fintiv, finding the factors holistically favored discretionary denial of review.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“and Trademark Office under 37 C.F.R. § 42.4(a), we may only institute an inter partes review when “the information presented in the petition . . . and any 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(a); see also 37 C.F.R. § 42.108(c). However, institution of inter partes review is discretionary. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.”). For the reasons below, we exercise our discretion not to institute an inter partes review.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“A holistic balancing of the Fintiv factors weighs in favor of discretionary denial of the Petition. As discussed above, factor 2 weighs heavily in favor of discretionary denial because the district court is likely to address patentability issues at trial before we would issue a final written decision. Factor 4 weighs in favor of discretionary denial, as does Factor 5 at least to some degree. Factors 1 and 6 are neutral. Factor 3 weighs against discretionary denial, but this factor does not outweigh the other factors under the circumstances of this case. Thus, the evidence of record favors exercising our discretion to deny institution of an inter partes review.” slip op. at 19
- Parallel petitionsNot reached
“patent. See Pet. 1; PO Resp. 43; Pet. Reply 4–5; Pet. Sur-reply 3–4. Patent Owner argues that Petitioner failed to justify the filing of two petitions challenging the same patent, and has not provided a ranking of the petitions or explained the differences between the two petitions. Prelim. Resp. 43 (citing Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 2019), https://www.uspto.gov/TrialPracticeGuideConsolidated (“Trial Practice Guide”)). Because Petitioner has subsequently ranked this Petition as the first among the two (Pet. Reply 4–5), and because we deny institution based on the Fintiv factors as discussed above, we need not decide whether it was appropriate for Petitioner to file two petitions challenging the ’552 patent.” slip op. at 19
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Other
“Based on the preliminary evidence, Petitioner has not shown that Vardi’s radio resource database from the server, which includes unauthenticated third-party information, teaches the claimed “authenticated access point list” transmitted by or received from the server. Petitioner has not cited to any evidence that a list including previously connected access points and unauthenticated third-party data constitutes the ordinary and customary meaning of the term “authenticated access point list.” To the extent that Petitioner is arguing that the term should be construed in a way that departs from its ordinary and customary meaning, Petitioner has not pointed to evidence for such a departure in the intrinsic record, and we are aware of no such evidence. We note that the ’522 patent states, “[b]y way of example, but not limitation,” that an “authenticated access point may include . . . an access point previously connected with [the] end device.” Ex. 1001, 4:33–36. But this does not appear to suggest that a prior connection is sufficient to authenticate the access point in the context of the ’552 patent.” slip op. at 18
§ 103 obviousnessDiscretionary denialPatents in suitUS 9,961,552 - Samsung Electronics Co., Ltd / Samsung Electronics America, Inc. v. Secure Wi-Fi LLCInstitution deniedPTAB · Mar 24, 2025 · IPR2024-01368 · APJ Christopher L Ogden · IPR · Institution
The Board denied institution of inter partes review of claims 1–9 under § 314(a), finding the Fintiv factors holistically favored discretionary denial.
RulingsInstitution decision- Parallel petitionsNot reached
“Patent Owner argues that Petitioner failed to justify the filing of two petitions challenging the same patent, and has not provided a ranking of the petitions or explained the differences between the two petitions. Prelim. Resp. 42 (citing Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 2019), https://www.uspto.gov/TrialPracticeGuideConsolidated (“Trial Practice Guide”)). Petitioner responds that its “ranking and explanation was at least implicitly included in the Petition.” Prelim. Reply 4. According to Petitioner, the IPR2024-01369 petition “covers all of the claims identified in Patent Owner’s Infringement Contentions” in the parallel district court proceeding. Id. at 4–5. Thus, the present Petition “ranks second, because it covers claims that have not been asserted against Petitioner in the [parallel district court proceeding].” Id. at 5. Petitioner also notes that the claims asserted in this proceeding “focus on the perspective of a server or access point,” whereas the claims in IPR2024-01369 are from the perspective of an end device. Id.” slip op. at 7
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Based on the preliminary record, it is highly likely that issues bearing on the patentability of the challenged claims will be considered and resolved before we would issue a final written decision. Thus, we determine that the second factor weighs heavily in favor of discretionary denial of the Petition.” slip op. at 12
Discretionary denialPatents in suitUS 9,961,552 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Secure Wi-Fi LLCInstitution deniedPTAB · Mar 24, 2025 · IPR2024-01367 · APJ Frederick C Laney · IPR · Institution
The Board denied institution of IPR challenging claims 1–24, exercising discretion under § 314(a) based on the Fintiv factors.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“same validity issues relating the ’384 patent addressed in this proceeding about five months before we would reach a final determination, we determine that Factor 2 weighs heavily in favor of discretionary denial.” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied
“whether to institute an inter partes review. Applying the standard set forth in 35 U.S.C. § 314(a), we may not institute an inter partes review (also “IPR”) unless the information presented in the petition “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.” However, institution of inter partes review is discretionary. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.”). For the reasons stated below, we exercise our discretion not to institute an inter partes review.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
§ 103 obviousnessDiscretionary denialPatents in suitUS 10,694,384
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.