Director_Discretionary _Decision@uspto.gov Paper 10
`571-272-7822 Date: October 17, 2025
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE OFFICE OF THE UNDER SECRETARY OF COMMERCE
`FOR INTELLECTUAL PROPERTY AND DIRECTOR OF THE
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`GOOGLE LLC,
`Petitioner,
`
`V.
`
`CELLULAR SOUTH, INC.,
`Patent Owner.
`
`IPR2025-00875 (Patent 9,940,972 B2)
`[PR2025-00876 (Patent 10,218,954 B2)
`[PR2025-00877 (Patent 11,126,853 B2)
`
`Before KALYAN K. DESHPANDE, ! Acting Chief Administrative Patent
`Judge.
`
`DECISION
`Denying Institution of Inter Partes Review in [IPR2025-00875 and
`IPR2025-00876 and Referring the Petition to the Board in IPR2025-00877
`
`! Coke Morgan Stewart, Deputy Under Secretary of Commerce for
`Intellectual Property and Deputy Director of the United States Patent and
`
`Trademark Office, 1s recused and took no part in this decision.
`See https://www.uspto.gov/sites/default/files/documents/dsco-
`
`delegation.pdf.
`
`
`
`
`
`
`
`
`IPR2025-00875 (Patent 9,940,972 B2)
`IPR2025-00876 (Patent 10,218,954 B2)
`[PR2025-00877 (Patent 11,126,853 B2)
`
`Cellular South, Inc. (“Patent Owner”) filed a request for discretionary
`denial (Paper 6, “DD Req.”) in the above-captioned cases, and Google LLC
`(“Petitioner”) filed an opposition (Paper 7, “DD Opp.”).2
`
`After considering the parties’ arguments and the record, and in view
`of all relevant considerations, discretionary denial of institution is
`appropriate in [IPR2025-00875 and IPR2025-00876, but is not appropriate in
`IPR2025-00877. This determination is based on the totality of the evidence
`and arguments the parties have presented.
`
`Some factors counsel against discretionary denial. For example, the
`projected final written decision due date is December 16, 2026. DD Req. 9—
`10. The district court trial 1s scheduled to begin March 15, 2027. Id. at 6;
`DD Opp. 4. As such, it is likely that a final written decision in this
`proceeding will issue before the district court trial occurs, reducing the risk
`of duplication of efforts and inconsistent outcomes. Additionally, the patent
`challenged in IPR2025-00877 has not been in force for a significant amount
`of time (issued in 2021). Early challenges favor robust, predictable patent
`rights and weigh against discretionary denial.
`
`The patents challenged in IPR2025-00875 and IPR2025-00876
`present different circumstances. In particular, these challenged patents have
`been in force for seven and six years, respectively, creating settled
`expectations for Patent Owner, and Petitioner does not provide persuasive
`reasoning why an inter partes review is an appropriate use of Board
`
`resources. Dabico Airport Sols. Inc. v. AXA Power ApS, IPR2025-00408,
`
`2 Citations are to papers in [IPR2025-00875. The parties filed similar papers
`in IPR2025-00876 and IPR2025-00877.
`
`
`
`
`
`
`
`
`IPR2025-00875 (Patent 9,940,972 B2)
`
`IPR2025-00876 (Patent 10,218,954 B2)
`
`[PR2025-00877 (Patent 11,126,853 B2)
`
`Paper 21 at 2-3 (Director June 18, 2025). In the absence of any such
`information, the Office is disinclined to disturb the settled expectations of
`Patent Owner.
`
`Although certain arguments are highlighted above, the determinations
`in this Decision are based on a holistic assessment of all of the evidence and
`arguments presented. Accordingly, the Petitions in [IPR2025-00875 and
`IPR2025-00876 are denied under 35 U.S.C. § 314(a), and the Petition in
`[PR2025-00877 is referred to the Board to handle the case in the normal
`course, including by issuing a decision on institution addressing the merits
`and other non-discretionary considerations, as appropriate.
`
`In consideration of the foregoing, it 1s:
`
`ORDERED that Patent Owner’s requests for discretionary denial in
`[PR2025-00875 and IPR2025-00876 are granted,
`
`FURTHER ORDERED that the Petitions in [PR2025-00875 and
`IPR2025-00876 are denied, and no trial is instituted;
`
`FURTHER ORDERED that Patent Owner’s request for discretionary
`denial in IPR2025-00877 is denied,
`
`FURTHER ORDERED that the Petition in IPR2025-00877 is referred
`to the Board; and
`
`FURTHER ORDERED that neither party shall file a request for
`rehearing or Director Review of the decision to deny Patent Owner’s request
`for discretionary denial in IPR2025-00877 until the Board issues a decision
`
`on institution.
`
`
`
`
`
`
`
`
`IPR2025-00875 (Patent 9,940,972 B2)
`IPR2025-00876 (Patent 10,218,954 B2)
`[PR2025-00877 (Patent 11,126,853 B2)
`
`FOR PETITIONER:
`
`Heidi Keefe
`Andrew Mace
`COOLEY LLP
`hkeefe(@cooley.com
`amace(@cooley.com
`
`FOR PATENT OWNER:
`
`Amy Simpson
`
`Robert Jain
`
`HOLLAND & KNIGHT LLP
`amy.simpson@hklaw.com
`robert.jain@hklaw.com
`
`
`
`
`
`
`
`
`