SAMSUNG ELECTRONICS CO., LTD. et al. v. OMNI MEDSCI, INC.
Patent Trial and Appeal Board
Holding
The Director vacated the prior institution of IPR2025-01253 and denied the petition challenging claim 7 of U.S. Patent No. 12,193,790 (a wearable health-monitoring technology patent) because the '790 patent was determined to be an AIA patent in a parallel PGR proceeding (PGR2026-00003), rendering it PGR-eligible and therefore ineligible for IPR. Because a patent cannot simultaneously be eligible for both IPR and PGR, the Director exercised sua sponte Director Review to vacate the institution notice and terminate the proceeding.
Why It Matters
This decision illustrates the risk of filing parallel IPR and PGR petitions on the same patent when AIA status is disputed: if a Director Review or separate proceeding resolves the patent's AIA status in favor of PGR eligibility, any concurrently instituted IPR will be vacated regardless of its merits posture. Practitioners should resolve AIA-status disputes before or at the outset of parallel petitions rather than relying on a party's uncontested representation.
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