- PTAB · Oct 3, 2025 · IPR2025-00680 · APJ Karl D Easthom · IPR · Institution
The Board instituted IPR of claims 2 and 3 on all grounds in the Petition and granted Nintendo’s motion to join IPR2024-00807, subject to participation limits.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“II. ANALYSIS A. Institution of Inter Partes Review We instituted an inter partes review in the Apple IPR on all challenged claims and all asserted grounds of unpatentability. Apple IPR, Paper 10 (institution decision); see also Apple IPR, Paper 2 (the “Apple Petition”). Petitioner here challenges the same claims and asserts the same grounds of unpatentability as those on which we instituted the Apple IPR. Compare Pet. 2, with Apple Petition 1; see also Mot. 1 (asserting the instant “Petition is substantively identical to Apple Inc.’s petition (‘Apple Petition’) in the Apple IPR, including that it relies on the same expert declaration,” and asserting “the same grounds presented in the Apple IPR”). As indicated, Petitioner also relies on the same declarant as did the petition in the Apple IPR. Mot. 1; compare Ex. 1003 (Hannaford Declaration), with Apple IPR, Ex. 1003 (same). Because the grounds of unpatentability in the instant Petition are identical to those in the Apple IPR and for the same reasons stated in our Decision to Institute in the Apple IPR, we institute inter partes review in this proceeding on the grounds presented in the Petition. See Apple IPR, Paper 10 (analyzing challenges in the Apple Petition).” slip op. at 7
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“We determine that Petitioner has met its burden of showing that joinder is appropriate because, as set forth above, the Petition (1) is substantially identical to the Apple Petition, (2) contains the same grounds based on the same evidence, and (3) relies on the same declaration, the Hannaford Declaration (Ex. 1003). Mot. 1, 4. Petitioner represents that “joinder will not negatively impact the Apple IPR trial schedule” and “expressly consents to the existing trial schedule.” Id. at 10; see also id. at 7 (“Proceeding with a consolidated inter partes review would avoid potential inconsistency, promote efficient review of the same claims for the same patent under the same grounds, and would result in a final written decision without delay.”). Petitioner also represents that as “long as Apple remains in the joined IPR, Nintendo remains in a limited ‘silent understudy’ role that does not actively participate in the IPR.” Id. at 8. The record supports Petitioner. In addition, the final written decision in the Apple IPR is due to issue on or before October 15, 2025, with the Oral Hearing complete and no further briefing due. See IPR 2024-00807, Paper 15 (Oral Hearing Transcript); Paper 18, 2–3. Therefore, as Petitioner argues, joinder by Petitioner will have little or no impact on the trial schedule in the Apple IPR. On the other hand, if the Board denies joinder, Petitioner submits that it “intends to file a separate petition for IPR (‘Second Petition’) that includes grounds in addition to some (or all) of the grounds in the Apple IPR.” Mot. 14.” slip op. at 10
NonePatents in suitUS 8,860,337 - PTAB · Jun 11, 2025 · IPR2025-00347 · APJ Karl D Easthom · IPR · Institution
The Board instituted review of claims 1–16 on all asserted grounds and granted joinder to IPR2024-00918, subject to participation limits.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314(b); 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), an inter partes review may not be authorized unless the information 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 that follow, we institute an inter partes review as to the challenged claims of the ’564 patent on all grounds of unpatentability presented. We also grant Petitioner’s Motion.” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“As moving party, Petitioner bears the burden of proving that it is entitled to the requested relief. 37 C.F.R. § 42.20(c). A motion for joinder should (1) set forth the reasons joinder is appropriate; (2) identify any new grounds of unpatentability asserted in the petition; and (3) explain what impact (if any) joinder would have on the trial schedule for the existing review. See Kyocera Corp. v. SoftView, LLC, IPR2013-00004, Paper 15 at 4 (PTAB Apr. 24, 2013). We determine that Petitioner has met its burden of showing that joinder is appropriate because, as set forth above, the Petition (1) is substantially identical to the fuboTV/MasterClass petition, (2) contains the same grounds based on the same evidence, and (3) relies on the same testimony from the same expert (Dr. Henry Houh, Ex. 1003). Mot. 1, 5–9. Petitioner also represents that joinder will not impact the fuboTV/MasterClass IPR schedule. See, e.g., Mot. 6–7 (“joinder will have minimal, if any, impact on the trial schedule, as all issues are substantively identical, and Petitioner will accept an ‘understudy’ role. . . . Lastly, the briefing and discovery will be simplified by resolving all issues in a single proceeding”), 9–10 (“[b]ecause the Instant Petition is substantively identical to the fuboTV/MasterClass [p]etition, with the same grounds applied to the same claims as instituted by the Board, there are no new issues for Patent Owner to address,” and “[j]oinder of this proceeding with the fuboTV/MasterClass IPR would not unduly burden or negatively impact the trial schedule in any meaningful way”).” slip op. at 10
NonePatents in suitUS 9,407,564 - PTAB · Jun 11, 2025 · IPR2025-00348 · APJ Karl D Easthom · IPR · Institution
The Board instituted review of claims 1–21 on all petition grounds and granted joinder to IPR2024-00919, subject to participation limits.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“fuboTV/MasterClass IPR on all challenged claims and all asserted grounds of unpatentability. See fuboTV/MasterClass IPR, Paper 14 (institution decision). Petitioner here challenges the same claims and asserts the same” slip op. at 8
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“As moving party, Petitioner bears the burden of proving that it is entitled to the requested relief. 37 C.F.R. § 42.20(c). A motion for joinder should (1) set forth the reasons joinder is appropriate; (2) identify any new grounds of unpatentability asserted in the petition; and (3) explain what impact (if any) joinder would have on the trial schedule for the existing review. See Kyocera Corp. v. SoftView, LLC, IPR2013-00004, Paper 15 at 4 (PTAB Apr. 24, 2013). We determine that Petitioner has met its burden of showing that joinder is appropriate because, as set forth above, the Petition (1) is substantially identical to the fuboTV/MasterClass petition, (2) contains the same grounds based on the same evidence, and (3) relies on the same testimony from the same expert (Dr. Henry Houh, Ex. 1003). Mot. 1, 5–10. Petitioner also represents that joinder will not impact the fuboTV/MasterClass IPR schedule. See, e.g., Mot. 6–7 (“joinder will have minimal, if any, impact on the trial schedule, as all issues are substantively identical, and Petitioner will accept an “understudy” role. . . . Lastly, the” slip op. at 10
NonePatents in suitUS 8,868,772 - PTAB · Mar 19, 2024 · IPR2024-00181 · APJ Timothy G Majors · IPR · Institution
The Board instituted inter partes review of claims 1–29 and granted Inari’s contingent motion to join the Bayer 1038 IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Petition, and has not otherwise addressed Inari’s contentions. Inasmuch as Patent Owner raised counterarguments to the grounds in the preliminary response that it filed in the Bayer 1038 IPR, we addressed those arguments in our Institution Decision in that proceeding. Bayer 1038 IPR, Paper 12. From our review of the preliminary record, we are persuaded that Inari’s Petition challenges the same claims of the ’745 patent, based on the same grounds and substantially the same evidence, compared to the challenge in the Bayer 1038 IPR.” slip op. at 5
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Furthermore, 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, 4 (PTAB Apr. 24, 2013); Patent Trial and Appeal Board, Consolidated Trial Practice Guide, 76 (Nov. 2019), https://www.uspto.gov/sites/default/files/ documents/tpgnov.pdf. Inari addresses these considerations in its Motion, and we generally agree with Petitioner’s assertions in favor of joinder. Mot. 3–10. We discuss below.” slip op. at 7
- Other 314aOther
“prevailing, as it is substantively identical to the successful petition upon which we instituted the Bayer 1038 IPR. However, institution of an inter partes review is discretionary. See 35 U.S.C. § 314(a) (authorizing institution of an inter partes review under particular circumstances, but not requiring institution under any circumstances); Cuozzo Speed Techs., LLC v. Lee, 579 U.S. 261, 273 (2016) (“[T]he agency’s decision to deny a petition is a matter committed to the Patent Office’s discretion.”); SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1356 (2018) (“[Section] 314(a) invests the Director with discretion on the question whether to institute review . . . .” (emphasis omitted)); 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.”). I would exercise that discretion here and deny the Petition. The Bayer 1038 IPR is governed by the petition filed by Bayer. See Facebook, Inc. v. Windy City Innovations, LLC, 973 F.3d 1321, 1336 (Fed. Cir. 2020) (“The already-instituted IPR to which a person may join as a party is governed by its own petition and is confined to the claims and grounds challenged in that petition.”). However, “[t]he instant Petition is substantively identical to the petition filed by Bayer, challenging the same claims of the ’745 patent on the same grounds and relying on substantively identical expert testimony.” Pet. 3. Thus, institution based on the instant Petition creates a second inter partes review that is duplicative of the Bayer 1038 IPR. As we are already granting Inari’s request to join the Bayer 1038 IPR as a petitioner, I see no benefit to granting Inari’s Petition to institute a second inter partes review. I would deny Inari’s Petition.” slip op. at 11
Discretionary denialPatents in suitUS 11,299,745 - PTAB · Mar 19, 2024 · IPR2024-00180 · APJ Timothy G Majors · IPR · Institution
The Board instituted IPR of claims 1–29 based on a reasonable likelihood of success and granted Inari’s motion to join the Bayer 1037 IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Petition, and has not otherwise addressed Inari’s contentions. Inasmuch as Patent Owner raised counterarguments to the grounds in the preliminary response that it filed in the Bayer 1037 IPR, we addressed those arguments in our Institution Decision in that proceeding. Bayer 1037 IPR, Paper 12. From our review of the preliminary record, we are persuaded that Inari’s Petition challenges the same claims of the ’283 patent, based on the same grounds and substantially the same evidence, compared to the challenge in the Bayer 1037 IPR.” slip op. at 5
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Furthermore, 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, 4 (PTAB Apr. 24, 2013); Patent Trial and Appeal Board, Consolidated Trial Practice Guide, 76 (Nov. 2019), https://www.uspto.gov/sites/default/files/ documents/tpgnov.pdf. Inari addresses these considerations in its Motion, and we generally agree with Petitioner’s assertions in favor of joinder. Mot. 3–10. We discuss below.” slip op. at 7
NonePatents in suitUS 11,149,283 - PTAB · Mar 19, 2024 · IPR2024-00179 · APJ Timothy G Majors · IPR · Institution
The Board instituted review of claims 1–34 on all four asserted grounds and granted Inari’s motion to join the Bayer 1036 IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Petition, and has not otherwise addressed Inari’s contentions. Inasmuch as Patent Owner raised counterarguments to the grounds in the preliminary response that it filed in the Bayer 1036 IPR, we addressed those arguments in our Institution Decision in that proceeding. Bayer 1036 IPR, Paper 11. From our review of the preliminary record, we are persuaded that Inari’s Petition challenges the same claims of the ’555 patent, based on the same grounds and substantially the same evidence, compared to the challenge in the Bayer 1036 IPR.” slip op. at 5
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“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, 4 (PTAB Apr. 24, 2013); Patent Trial and Appeal Board, Consolidated Trial Practice Guide, 76 (Nov. 2019), https://www.uspto.gov/sites/default/files/ documents/tpgnov.pdf. Inari addresses these considerations in its Motion, and we generally agree with Petitioner’s assertions in favor of joinder. Mot. 3–10. We discuss below.” slip op. at 7
NonePatents in suitUS 10,947,555 - PTAB · Oct 11, 2023 · IPR2023-00830 · APJ Sharon Fenick · IPR · Institution
The Board instituted review of claims 1–19 on all asserted grounds and granted T-Mobile’s motion to join the CommScope IPR, subject to participation limits.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“challenged claims and all asserted grounds of unpatentability. CommScope IPR, Paper 18 (institution decision); see also CommScope IPR, Paper 1 (the “CommScope petition”). Petitioner here challenges the same claims and asserts the same grounds of unpatentability as those on which we instituted the CommScope IPR. Compare Pet. 3, with CommScope petition, 4; see also Mot. 1 (asserting that “[t]his Petition and supporting declaration are substantively identical to the petition and declaration submitted in the CommScope IPR”; “Petitioner here asserts that the same claims are obvious over the same prior art based on the same arguments presented by the same expert as in the CommScope IPR”). As indicated, Petitioner also relies on the same declarant as in the CommScope IPR. Mot. 1; compare Ex. 1003 (Declaration of Anthony Acampora, Ph.D.) with CommScope IPR, Ex. 1003 (same). Because the grounds of unpatentability in the instant Petition are identical to those in the CommScope IPR and for the same reasons stated in our Decision to Institute in the CommScope IPR, we institute inter partes review in this proceeding on the grounds presented in the Petition. See CommScope IPR, Paper 18, 19–41 (analyzing challenges in the CommScope petition).” slip op. at 7
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“We determine that Petitioner has met its burden of showing that joinder is appropriate because, as set forth above, the Petition is substantially identical to the CommScope petition, contains the same grounds based on the same evidence, and relies on the same declaration of Anthony Acampora, Ph.D. (Ex. 1003). Mot. 1, 4–5. Petitioner represents that joinder will not impact the CommScope IPR schedule. Id. at 5. Petitioner also represents that it “agrees to take an ‘understudy’ role in the joined proceeding, so long as CommScope remains an active party.” Id.” slip op. at 8
NonePatents in suitUS 10,334,499 - PTAB · Sep 22, 2023 · IPR2023-00856 · APJ Karl D Easthom · IPR · Institution
The Board instituted inter partes review of claims 1–20 on all grounds presented and granted T-Mobile’s motion to join IPR2022-01242, 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 CommScope IPR and for the same reasons stated in our Decision to Institute in the CommScope IPR, we institute inter partes review in this proceeding on the grounds presented in the Petition. See CommScope IPR, Paper 24, 8–75 (analyzing challenges and issues of discretionary denial in the CommScope petition).” slip op. at 8
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“We determine that Petitioner has met its burden of showing that joinder is appropriate because, as set forth above, the Petition is substantially identical to the petition in the CommScope IPR, contains the same grounds based on the same evidence, and relies on the same declaration of Dr. Anthony Acampora. Ex. 1003. Further, Petitioner represents that joinder will not impact the CommScope IPR schedule.” slip op. at 9
NonePatents in suitUS 11,026,232 - PTAB · Sep 13, 2023 · IPR2023-00844 · APJ John R Kenny · IPR · Institution
The Board instituted inter partes review of claims 1–20 on all grounds presented and granted AT&T’s motion to join IPR2022-01242, 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 CommScope IPR and for the same reasons stated in our Decision to Institute in the CommScope IPR, we institute inter partes review in this proceeding on the grounds presented in the Petition. See CommScope IPR, Paper 24, 8–75 (analyzing challenges and issues of discretionary denial in the CommScope petition).” slip op. at 9
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“We determine that Petitioner has met its burden of showing that joinder is appropriate because, as set forth above, the Petition is substantially identical to the petition in the CommScope IPR, contains the same grounds based on the same evidence, and relies on the same declaration of Dr. Anthony Acampora. Ex. 1003. Petitioner represents that joinder will not impact the CommScope IPR schedule. Mot. 10 (Petitioner “expressly consents to the trial schedule issued in the CommScope IPR”). Petitioner further states that “no additional briefing” slip op. at 9
NonePatents in suitUS 11,026,232 - PTAB · Aug 14, 2023 · IPR2023-00818 · APJ Sharon Fenick · IPR · Institution
The Board instituted IPR of claims 1–19 on all petitioned grounds and granted AT&T’s motion to join the Ericsson IPR, subject to participation limits.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“As moving party, Petitioner bears the burden of proving that it is entitled to the requested relief. 37 C.F.R. § 42.20(c). A motion for joinder should (1) set forth the reasons joinder is appropriate; (2) identify any new grounds of unpatentability asserted in the petition; and (3) explain what impact (if any) joinder would have on the trial schedule for the existing review. See Kyocera Corp. v. SoftView, LLC, IPR2013- 00004, Paper 15 at 4 (PTAB Apr. 24, 2013). We determine that Petitioner has met its burden of showing that joinder is appropriate because, as set forth above, the Petition (1) is substantially identical to the Ericsson petition, (2) contains the same grounds based on the same evidence, and (3) relies on the same declaration of Henry Houh, Ph.D. (Ex. 1012). Mot. 1, 4–5. Petitioner represents that joinder will not impact the Ericsson IPR schedule. Id. at 5 (listing reasons as to why “joinder will not impact any schedule that may issue or otherwise prejudice the Patent Owner.”). Petitioner also represents that it “will maintain only an ‘understudy’ role in the proceeding, if joined.” Id. at 6.” slip op. at 8
NonePatents in suitUS 10,334,499
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.