In Comcast Cable Commc'ns, LLC v. Entropic Commc'ns, LLC, IPR2025‑00183, ‑00184, ‑00185, Paper 11 (P.T.A.B. June 25, 2025), the Acting USPTO Director Coke Morgan Stewart discretionarily denied institution because of "the presence of multiple parallel proceedings and the avoidance of inconsistent outcomes."
The Acting Director recognized that the patent owner asserted the challenged patent in multiple ongoing, parallel district court proceedings. From this, the Director concluded that institution would be an inefficient "use of Board resources" and denial was appropriate to "reduce[] the chances of duplicative workloads and inconsistent outcomes."
The Director also considered Comcast's two previous IPR challenges of a related patent with similar claims as the challenged patent, finding the earlier challenges also favor denial. In both earlier challenges, the Board found the petition's merits did not warrant institution. The Director noted this as a factor favoring discretionary denial because "the practice of the same party filing multiple petitions challenging the same patent, as Petitioner has done here . . . is disfavored."
Takeaways: This decision highlights that multiple, distinct litigations involving the challenged patent may favor discretionary denial. Thus, Petitioners should consider filing motions to consolidate in a parallel district court litigation to avoid this scenario.
Additionally, when a Petitioner has previously filed IPRs attacking the challenged patent or a related patent, the Petitioner should provide persuasive reasons why the new challenge should be reviewed.
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