Trial Date Drives PTAB’s Denial of IPR Institution

By Mike Lavine –

On April 16, 2025, the Patent Trial and Appeal Board (PTAB) denied institution of inter partes review (IPR) for several claims of U.S. Patent No. 7,187,307, owned by Universal Connectivity Technologies, Inc. HP Inc., Dell Technologies Inc., Dell Inc., and Lenovo (United States) Inc. filed the IPR petition.

The ‘307 patent relates to a communication system involving two endpoints and a serial link, with specific encoding and decoding functionalities. The PTAB’s decision was heavily influenced by the existence of multiple parallel district court litigations involving the same patent, including cases in the Western District of Texas, Northern District of California, and Eastern District of Texas. Notably, the Lenovo Group litigation in the Eastern District of Texas was identified as the most significant, with a trial date set for November 3, 2025—approximately six months before the PTAB’s projected final written decision.

The Board applied the Fintiv factors to assess whether to exercise its discretion to deny institution. Key considerations included the proximity of the district court trial date to the PTAB’s decision deadline, the overlap of parties and issues, and the investment already made in the district court proceedings. The Board found that the trial date in the Lenovo Group litigation, the overlap of parties, and the lack of particularly strong merits in the petition all weighed in favor of discretionary denial. Although the petitioners offered a broad stipulation to avoid duplicative invalidity arguments, the Board determined that overall efficiency and fairness favored denial.

Takeaway: This decision underscores the PTAB’s willingness to deny IPR institution when parallel district court litigation is well underway, especially if the district court is likely to resolve the validity issues first.