PTAB challenges

The USPTO Open Data Portal (ODP) API indicates no AIA trial proceedings for US Patent 10664518 as of the most recent ingest. However, this contradicts information provided in the "Litigation summary" section and the Google Patents legal status for US10664518, which explicitly reference PTAB case IPR2021-01119. The more specific information from the litigation summary and Google Patents is prioritized.

Proceedings overview

There has been one AIA trial proceeding filed against US Patent 10664518, which resulted in a denial of institution on the merits. This outcome means the challenged claims of the patent were not invalidated by the Patent Trial and Appeal Board (PTAB) in this proceeding. However, it is crucial to note that several claims of this patent (7, 14, 16, 19, 26, and 31) have been subsequently invalidated by a District Court under 35 U.S.C. § 101 and that ruling was affirmed by the Federal Circuit. This creates a complex defensive posture: while certain claims survived a PTAB challenge, a significant portion of the patent has been judicially deemed invalid on eligibility grounds.

IPR2021-01119 — Niantic, Inc. v. Nant Holdings IP, LLC and NantWorks, LLC

• Type: Inter Partes Review
• Filed: 2021-08-16 [cite: Unified Patents IPR2021-01119 portal]
• Status: Institution Denied - Merits [cite: Google Patents Legal Status, Litigation Summary]
• Judge panel: Not publicly accessible through available search methods.
• Petition grounds: Niantic, Inc. challenged claims 1, 3-6, 8-13, 15-20 (total 17 claims) under 35 U.S.C. § 102 (novelty) and § 103 (obviousness). The petition cited various prior art references, including U.S. pre-grant publication numbers 2013/0265387 (Jin), 2014/0184749 (Hilliges et al.), 2012/0229607 (Baker et al.), 2012/0163672 (McKinnon), 2014/0011518 (Valaee et al.), 2012/0149415 (Valaee et al.), and patent numbers US 8,519,844 (Richey et al.), US 8,321,527 (Martin et al.), International Publication numbers WO 2013/023705 (Hoffman et al.), WO 2007/140155 (Leonard et al.), and U.S. pre-grant publication numbers 2013/0073988 (Groten et al.), 2013/0003708 (Ko et al.), and 2013/0124326 (Huang et al.). [cite: Unified Patents IPR2021-01119 portal]
• Institution decision: Denied on 2021-12-09 [cite: Unified Patents IPR2021-01119 portal]. The PTAB determined that the petitioner did not demonstrate a reasonable likelihood of prevailing on the merits of the challenged claims. The specific reasoning for the denial on the merits is not publicly available through direct search results.
• Final Written Decision: Not applicable, as institution was denied.
• Settlement / termination: The proceeding was terminated by the denial of institution.
• Appeal: Not applicable, as institution was denied.
• Defensive value: This IPR proceeding has limited direct defensive value for an asserted defendant in terms of invalidating claims via PTAB. The PTAB declined to institute, meaning the challenged claims (1, 3-6, 8-13, 15-20) were effectively sustained against the novelty and obviousness grounds presented by Niantic. An IPR-based defense using the same grounds would face a high hurdle, as the PTAB has already found them insufficient for institution.

Strategic summary

Of the 31 claims in US Patent 10,664,518:

• CANCELED: Claims 7, 14, 16, 19, 26, and 31 have been invalidated as patent-ineligible under 35 U.S.C. § 101 by the U.S. District Court for the Northern District of California, a decision affirmed by the U.S. Court of Appeals for the Federal Circuit on April 23, 2026 [cite: Litigation Summary, CAFC slip opinion Case No. 24-2216].
• SUSTAINED (by PTAB non-institution): Claims 1, 3-6, 8-13, 15, 17, 18, and 20 were challenged in IPR2021-01119 but the PTAB denied institution on the merits [cite: Unified Patents IPR2021-01119 portal]. These claims therefore remain intact against the specific prior art and grounds raised in that petition.
• UNTESTED: Claims 2, 21-25, 27-30 have not been directly challenged in the IPR proceeding or invalidated in the district court litigation.

The estoppel landscape under 35 U.S.C. § 315(e)(2) would bar Niantic, Inc. (and its privies) from challenging claims 1, 3-6, 8-13, 15-20 in future district court or ITC proceedings on any ground that was raised or reasonably could have been raised in IPR2021-01119. For other defendants, the specific prior art and grounds presented by Niantic in IPR2021-01119 would have been "considered" by the PTAB (even if only for the institution decision), which could influence the PTAB's discretionary decisions for future petitions.

The patent owner, Nant Holdings IP, LLC, successfully defended the claims challenged in the IPR by preventing institution. However, the subsequent judicial invalidation of several claims under § 101 significantly weakens the patent, particularly for claims 7, 14, 16, 19, 26, and 31. The fact that the same entity, Niantic, was involved in both the IPR and the district court litigation suggests a comprehensive defense strategy that ultimately prevailed on eligibility grounds in court, even though the PTAB challenge on novelty/obviousness did not proceed to trial.

Recommended next steps

For a defendant currently being asserted against claims 7, 14, 16, 19, 26, or 31, any infringement theory built on these claims is moot. These claims are definitively invalid under 35 U.S.C. § 101, as affirmed by the Federal Circuit in NantWorks, LLC et al. v. Niantic, Inc., Case No. 24-2216 (Fed. Cir. April 23, 2026). The Federal Circuit found that these claims were directed to the abstract idea of "providing information based on a location on a map" and lacked a sufficient inventive concept. [cite: CAFC slip opinion Case No. 24-2216].

For any claims not invalidated by the court, such as claims 1, 3-6, 8-13, 15, 17, 18, 20 (which survived the IPR institution challenge) and claims 2, 21-25, 27-30 (which were untested), a defendant would need to develop new non-obviousness/novelty arguments (if pursuing an IPR) or new § 101 eligibility challenges (if pursuing litigation) against these specific claims. The lack of PTAB institution on claims 1, 3-6, 8-13, 15-20 implies that Niantic's presented prior art failed to meet the "reasonable likelihood" threshold, suggesting that new or stronger prior art would be needed for a subsequent PTAB challenge.