PTAB challenges

Proceedings overview

There is one AIA trial proceeding on file for US patent 10728436. This proceeding received a discretionary denial of institution, meaning no claims were challenged on the merits. This gives a defendant a posture where the patent has not been subjected to PTAB review of its claims, thus they remain untested by this specific IPR.

IPR2025-01604 — Avidbots Corporation et al. v. Brain Corp

• Type: Inter Partes Review
• Filed: 2025-12-04
• Status: Discretionary Denial – The Board declined to institute the inter partes review.
• Judge panel: The panel members were Administrative Patent Judges Tina H. Hulse, Brian F. McNamara, and Michael P. Tierney.
• Petition grounds: The petition challenged claims 1-20 of U.S. Patent No. 10,728,436 B2 as unpatentable under 35 U.S.C. § 103(a) over various combinations of prior art, including U.S. Patent Publication No. 2014/0071302 (Kashino) in view of U.S. Patent Publication No. 2008/0101701 (Kiyoi) and U.S. Patent No. 8,620,064 (Cho).
• Institution decision: Denied on 2026-05-07. The Board exercised its discretion to deny institution under 35 U.S.C. § 314(a) based on considerations of judicial economy and the advanced stage of co-pending district court litigation. Specifically, the Board considered factors outlined in Fintiv Inc. v. [Apple Inc.](/litigations/by-plaintiff/Apple%20Inc.), IPR2020-00019, Paper 32 (PTAB Mar. 20, 2020) (precedential).
• Final Written Decision: Not issued, as institution was denied.
• Settlement / termination: Not applicable due to denial of institution.
• Appeal: Not applicable due to denial of institution.
• Defensive value: The discretionary denial of institution means that the patent's claims were not substantively reviewed by the PTAB in this proceeding. Therefore, potential challengers are not estopped from raising the same or similar prior art grounds in future challenges, provided they can overcome discretionary denial factors such as those under Fintiv. For a defendant facing assertion of this patent, this IPR offers no direct invalidation, but the petition itself highlights prior art that the petitioner believed was relevant.

Strategic summary

Currently, claims 1-20 of US patent 10728436 remain untested by an AIA trial on their merits. The sole IPR filed, IPR2025-01604, was denied institution on procedural grounds related to co-pending district court litigation (the Fintiv factors), rather than on the merits of the patentability challenge itself. This means no claims were canceled or sustained by the PTAB.

The estoppel landscape under 35 U.S.C. § 315(e)(2) does not apply to Avidbots Corporation et al. (the petitioner in IPR2025-01604) or their privies regarding the claims challenged, because institution was denied. Consequently, they are not barred from raising any ground that they raised or reasonably could have raised, although any future petition would again face the same Fintiv discretionary denial considerations if district court litigation remains at an advanced stage. For other potential defendants, all prior-art grounds remain theoretically available, subject to the PTAB's discretionary denial policies. There is no pattern of aggressive PTAB appeals by the patent owner or engagement by defensive aggregators evident from this single proceeding.

Recommended next steps

Since institution was denied in IPR2025-01604, there is no Final Written Decision invalidating claims. However, the Board's decision provides insight into the prior art cited by Avidbots Corporation et al.. Any defendant currently being asserted against should carefully review the IPR2025-01604 institution decision to understand the Fintiv factors that led to the discretionary denial and assess the status of any related district court litigation. If considering their own PTAB challenge, they would need to address the Fintiv factors to increase the likelihood of institution. The absence of an instituted PTAB trial means the patent has not yet been subjected to a full administrative review of its claims, which could be a signal for potential future challenges depending on the assertion strategy of the patent owner.