PTAB challenges

Proceedings overview

A total of three AIA trial proceedings have been filed against US patent 10339520, all of which are Inter Partes Reviews (IPRs). All three IPRs were denied institution on discretionary grounds. This means that no claims of the patent have been challenged on their merits or invalidated through these PTAB proceedings, leaving the patent owner in a strong defensive posture as the patent has survived these challenges.

IPR2025-01513 — Google LLC v. Virtual Electric Inc / CardWare Inc.

• Type: Inter Partes Review
• Filed: 2025-09-04
• Status: Discretionary Denial. The petition for IPR was denied institution by the PTAB on discretionary grounds.
• Judge panel: Information not publicly available in the provided search results.
• Petition grounds: Specific claims and prior art cited were not identified in the search results.
• Institution decision: Denied. The institution was denied based on discretionary factors. The PTAB has recently increased discretionary denials, often based on factors such as the patent's age (known as "settled expectations") or parallel district court litigation (Fintiv factors). The USPTO introduced a bifurcated review process in March 2025, where the Director first decides discretionary considerations before any merits review by a panel of judges.
• Final Written Decision: Not applicable, as institution was denied.
• Settlement / termination: Not applicable, as institution was denied.
• Appeal: Not applicable, as institution decisions are generally not appealable under the AIA (35 U.S.C. § 314(d)).
• Defensive value: The patent owner successfully defended against this IPR challenge, preventing any review of the patentability of its claims. This denial means that Google LLC (and its privies) would be estopped from bringing the same or substantially similar invalidity arguments in future proceedings if they were raised or reasonably could have been raised in this petition.

IPR2025-01146 — [Apple Inc.](/litigations/by-plaintiff/Apple%20Inc.) v. Virtual Electric Inc / CardWare Inc.

• Type: Inter Partes Review
• Filed: 2025-06-24
• Status: Discretionary Denial. The petition for IPR was denied institution by the PTAB on discretionary grounds.
• Judge panel: Information not publicly available in the provided search results.
• Petition grounds: Specific claims and prior art cited were not identified in the search results.
• Institution decision: Denied. The institution was denied based on discretionary factors. Similar to other 2025 IPRs, this denial likely stemmed from policies prioritizing "settled expectations" based on the patent's age or the status of parallel district court litigation under the Fintiv framework. The USPTO's interim processes for PTAB workload management, introduced in March 2025, give the Director the first say on discretionary denial.
• Final Written Decision: Not applicable, as institution was denied.
• Settlement / termination: Not applicable, as institution was denied.
• Appeal: Not applicable, as institution decisions are generally not appealable under the AIA.
• Defensive value: This IPR denial strengthens the patent owner's position, as Apple Inc. was prevented from challenging the patent's claims on their merits. This makes an IPR-based defense harder for Apple and its privies regarding the grounds raised or that could have been reasonably raised.

IPR2025-01145 — Apple Inc. v. Virtual Electric Inc / CardWare Inc.

• Type: Inter Partes Review
• Filed: 2025-06-24
• Status: Discretionary Denial. The petition for IPR was denied institution by the PTAB on discretionary grounds.
• Judge panel: Information not publicly available in the provided search results.
• Petition grounds: Specific claims and prior art cited were not identified in the search results.
• Institution decision: Denied. The institution was denied based on discretionary factors. This denial, like the others in 2025, likely reflects the USPTO's enhanced focus on discretionary denials through the "Interim Process for PTAB Workload Management" memo issued in March 2025, which introduced factors like "settled expectations" and a bifurcated review process.
• Final Written Decision: Not applicable, as institution was denied.
• Settlement / termination: Not applicable, as institution was denied.
• Appeal: Not applicable, as institution decisions are generally not appealable under the AIA.
• Defensive value: The patent owner successfully maintained the patent against this IPR challenge. For Apple Inc. (and its privies), this means a direct IPR challenge using the same or similar grounds would likely face estoppel.

Strategic summary

All three IPR proceedings filed against US patent 10339520 (IPR2025-01513, IPR2025-01146, IPR2025-01145) resulted in a "Discretionary Denial" of institution. This means the PTAB did not proceed to a merits-based review of the patentability of the challenged claims. Consequently, all claims of US10339520 remain UNTESTED by the PTAB and are presumed valid. There are no claims that have been CANCELED or SUSTAINED through these IPR proceedings.

The estoppel landscape under 35 U.S.C. § 315(e)(2) generally bars petitioners (and their privies) from raising any ground they raised or reasonably could have raised in an IPR that proceeds to a Final Written Decision. However, since all three petitions were denied institution, the scope of estoppel is often narrower, particularly concerning grounds that were not fully adjudicated on the merits. The exact scope would depend on the specific reasoning for each discretionary denial, which often involves procedural or policy considerations rather than a full assessment of the merits of the prior art. Nonetheless, the petitioners (Google LLC and Apple Inc.) and their privies may face some form of estoppel regarding the specific arguments and prior art presented in their petitions, especially if the denial implicitly or explicitly touched upon the merits in a limited way, or if the denial was based on a petitioner's failure to meet certain procedural requirements.

A clear pattern signal is the consistent discretionary denial of IPRs in 2025. This aligns with a broader trend at the PTAB in 2025, where the Acting Director, Coke Morgan Stewart, significantly increased discretionary denials, often based on the "settled expectations" doctrine (the length of time a patent has been in force) and the Fintiv factors (parallel litigation). The implementation of a bifurcated review process in March 2025 centralized discretionary decisions with the Director, making it harder for petitions to even reach a merits review by a panel of judges. The patent owner, Virtual Electric Inc./CardWare Inc., has successfully navigated these challenges by securing discretionary denials.

Recommended next steps

For a defendant currently being asserted against US patent 10339520, the fact that all three IPRs were denied institution means that the patent claims have not been challenged on their merits at the PTAB. This suggests that the patent owner has a strengthened position regarding the validity of the claims against IPR challenges by Google LLC and Apple Inc. (and their privies) based on the grounds they presented.

• Review Denial Decisions: It is crucial to obtain and thoroughly analyze the specific written decisions for each discretionary denial (IPR2025-01513, IPR2025-01146, IPR2025-01145) from the USPTO PTAB E2E system. Understanding the exact reasoning for each denial (e.g., Fintiv, General Plastic, "settled expectations," RPI issues) will clarify the precise scope of any potential estoppel for the petitioners and inform future defensive strategies.
• Prior Art Landscape: While Google LLC and Apple Inc. may be estopped from re-raising certain arguments, other potential defendants or even these petitioners (with different counsel/privity status) may still be able to present new prior art or different invalidity arguments in future IPRs or district court litigation. The lack of merits-based decisions means the underlying patentability of the claims has not been confirmed by the PTAB.
• Evaluate Patent Age: Given the "settled expectations" doctrine prominent in 2025, the age of US10339520 (priority date 2013-03-15, publication date 2019-07-02) might have played a role in the discretionary denials for petitions filed in 2025. Defendants considering new PTAB challenges should be aware of this factor.
• No Active Proceedings: There are currently no active PTAB proceedings on US103339520. This means no immediate institution deadlines or Final Written Decision due dates are pending.