- 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 · Nov 6, 2018 · IPR2017-01328 · APJ Kamran Jivani · IPR · Final written decision
The Board canceled claims 14 and 15 and denied entry of substitute claims 16 and 17 because their feedback-signal limitation introduced unsupported new matter.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part
“must determine whether the motion to amend meets the statutory and regulatory requirements set forth in 35 U.S.C. § 316(d) and 37 C.F.R. § 42.121. A motion to amend “may not enlarge the scope of the claims of the patent or introduce new matter.” 35 U.S.C. § 316(d)(3). Further, our rules provide that “[a] motion to amend may be denied where . . . [t]he amendment seeks to enlarge the scope of the claims of the patent or introduce new subject matter.” 37 C.F.R. § 41.121(a)(2)(ii). In the Federal Circuit’s en banc decision in Aqua Products, Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017), the lead plurality opinion explains that “the patent owner must satisfy the Board that the statutory criteria in § 316(d)(1)(a)–(b) and § 316(d)(3) are met and that any reasonable procedural obligations imposed by the Director are satisfied.” Id. at 1305– 06; see also id. at 1341 (“There is no disagreement that the patent owner bears a burden of production in accordance [with] 35 U.S.C. § 316(d).” (Reyna, J., writing for a majority)). We, therefore, must determine whether Patent Owner has made a showing sufficient to establish that its Motion to Amend complies with Section 316(d)(3).” slip op. at 10
- ExcludeMotion to exclude, deniedDenied
“V. PATENT OWNER’S MOTION TO EXCLUDE Patent Owner moves to exclude Petitioner’s Exhibits 1015 and 1017, which are declarations of Mr. Bohannon, “on the basis that Mr. Bohannon is not qualified to testify as an expert with respect to the technology in this [proceeding].” Paper 29, 2. We dismiss as moot Patent Owner’s motion because we did not rely on Exhibits 1015 and 1017 in our determination above that Patent Owner did not show adequate support for proposed substitute claims 16 and 17. See supra Section III.B.” slip op. at 15
NonePatents in suitUS 6,845,019 - PTAB · Feb 14, 2018 · IPR2016-01600 · APJ Lynne E Pettigrew · IPR · Final written decision
The Board granted cancellation of claims 1, 2, 5, and 9 but denied substitute claims 13–16 because the application lacked written description support for the added limitation.
RulingsFinal written decision- 112 supportMotion to amend, deniedDenied
“Under the correct test for compliance with the written description requirement, Patent Owner’s arguments and evidence do not establish that the ’642 application provides written description support for a variable current limit threshold increasing “during at least a portion of the first state.” The only embodiment disclosed in the ’642 application shows a current limit threshold that increases during the entire on time of the switch (i.e., the entire first state), and the ’642 application never describes a current limit threshold that increases during only a portion of the on time of the switch. Patent Owner’s Motion to Amend and Dr. Kelley’s declaration testimony in support thereof rely exclusively on portions of the ’642 application describing a threshold that increases throughout the on time of the switch. See Mot. 10–13; Ex. 2010 ¶¶ 62–65. Patent Owner and Dr. Kelley do not specifically address the “at least a portion of” claim language and thus fail to explain adequately how the disclosure of a threshold that increases throughout the on time of the switch would reasonably convey to a person having ordinary skill in the art that the inventor had possession of a current limit threshold that increases for “at least a portion of” the first state. Therefore, Patent Owner’s arguments and submitted testimony are unsupported and conclusory with regard to written description support for the “at least a portion” language, and indeed are inconsistent with the disclosure in the ’642 application, which provides support only for a current limit threshold that increases during the entire first state.” slip op. at 22
- Skill levelSkill level patent owner adoptedDecided for patent owner
“Owner asserts that a person of ordinary skill in the art at the time of the invention of the ’605 patent “would have had a bachelor’s degree in electrical engineering, physics, or a related discipline, and at least two to three years of relevant experience in the field of power electronics or similar circuitry.” Mot. 3 (citing Ex. 2010 ¶ 22). Patent Owner further asserts that “[a]dditional education, such as an advanced degree in electrical engineering or a related field, might substitute for some of the experience, and substantial experience might substitute for some of the educational background.” Id. (citing Ex. 2010 ¶ 22). Petitioner’s declarant, Dr. Douglas Holberg, has a similar view, opining that a person of ordinary skill in the art at the time of the invention would have had “a B.S. in Electrical Engineering or a related field with at least two years of experience in designing power electronics,” or “an M.S. in Electrical Engineering or a related field.” Ex. 1003 ¶ 38. The two formulations do not differ in any material way. Based on our review of the record, we agree with the parties as to the level of ordinary skill in the art. For purposes of analyzing the Motion to Amend, we specifically adopt Patent Owner’s definition of a person of ordinary skill in the art. See Mot. 3; Ex. 2010 ¶ 22.” slip op. at 14
- Expert testimonyPatent owner expert discountedDecided for petitioner
“We disagree for two reasons. First, under Aqua Products, as explained further in the Office’s post-Aqua Products guidance document, a patent owner must still meet the statutory and regulatory requirements for a motion to amend, including setting forth written description support for amended claims, which must not introduce new matter. Aqua Prods., 872 F.3d at 1305–06; Guidance 2. Second, Dr. Kelley’s conclusion that the ’642 application provides written description support for “the variable current limit threshold increases during at least a portion of the first state of each control signal cycle” is conclusory and inconsistent with the intrinsic evidence (i.e., the ’642 application itself), and we therefore give his testimony on this point little weight.” slip op. at 23
- BurdenDecided for petitioner
“We disagree for two reasons. First, under Aqua Products, as explained further in the Office’s post-Aqua Products guidance document, a patent owner must still meet the statutory and regulatory requirements for a motion to amend, including setting forth written description support for amended claims, which must not introduce new matter. Aqua Prods., 872 F.3d at 1305–06; Guidance 2. Second, Dr. Kelley’s conclusion that the ’642 application provides written description support for “the variable current limit threshold increases during at least a portion of the first state of each control signal cycle” is conclusory and inconsistent with the intrinsic evidence (i.e., the ’642 application itself), and we therefore give his testimony on this point little weight.” slip op. at 23
NonePatents in suitUS 7,834,605 - PTAB · Nov 26, 2014 · IPR2014-01438 · APJ Robert J Weinschenk · IPR · Order
The Board granted the parties’ joint motion and terminated the proceeding as to all parties before deciding whether to institute review.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Preliminary Response has not been filed, and a decision whether to institute a trial has not been rendered. Patent Owner represents that there is no currently pending district court litigation or ITC proceeding regarding the ’990 patent, and no decision has been made regarding future litigation. Mot. 1–2. Patent Owner also represents that there is no other related proceeding regarding the ’990 patent in the Office. Id. at 2. Based on the facts of this case, we determine it is appropriate to enter judgment terminating this proceeding with respect to all parties. We further find sufficient cause to treat the settlement agreement as business confidential information. Therefore, we grant the joint motion to terminate and the joint request to treat the settlement agreement as business confidential information. III. ORDER In consideration of the foregoing, it is hereby: ORDERED that the joint motion to terminate is granted, and this proceeding is terminated as to all parties; and” slip op. at 2
NonePatents in suitUS 6,844,990 - 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 · Aug 4, 2014 · IPR2014-00457 · APJ Brian J Mcnamara · IPR · Order
The Board granted the parties’ joint motion and terminated the proceeding after settlement, before institution and without a final written decision.
RulingsOther- Adverse judgmentAdverse judgmentGranted
“A decision whether to institute a trial has not been entered.. Thus, this matter was in the preliminary stages at the time the parties moved to terminate this proceeding. The parties have represented that they have settled the litigation between them. Although U.S. Patent 7,737,842 B2 is one of four patents asserted in another lawsuit that is active at this time, no other petitions for inter partes review have been identified. 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;” slip op. at 2
NonePatents in suitUS 7,737,843 - PTAB · Aug 4, 2014 · CBM2014-00089 · APJ Brian J Mcnamara · CBM · Order
The Board granted the parties’ joint motion and terminated the proceeding after settlement, before institution and without a final written decision.
RulingsOther- Adverse judgmentAdverse judgmentGranted
“The parties have moved to terminate this proceeding in view of their settlement of their underlying litigation. A decision by the Board to institute a trial has not yet been entered. Thus, this matter was in the preliminary stages at the time the parties moved to terminate. U.S. Patent 8,346,894 B2, which is the subject of this proceeding, is also the subject of CBM2014-00097, CBM2014- 00101, IPR2014-00413 and IPR2014-00414. Those proceedings will not be affected by the termination of this covered business method patent review. 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;” slip op. at 2
NonePatents in suitUS 8,346,894 - PTAB · Jun 26, 2014 · IPR2014-00560 · APJ Hyun J Jung · IPR · Order
The Board granted the parties’ joint motion and terminated IPR2014-00560 without a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“The parties stated in their joint motion that they have settled their dispute and have reached agreement to terminate this inter partes review. Paper 10, 2. Patent Owner has not yet filed a preliminary response or a waiver under 37 C.F.R. § 42.107. We are persuaded that, under these circumstances, it is appropriate to terminate this proceeding without rendering a final written decision. 37 C.F.R. § 42.72. Accordingly, it is: ORDERED that the joint motion to terminate this proceeding is GRANTED and this proceeding is hereby terminated; and” slip op. at 2
NonePatents in suitUS 5,592,555
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.