PTAB challenges

Proceedings overview

One AIA trial proceeding has been filed against US patent 10793916. The proceeding resulted in a discretionary denial of institution, meaning no claims were challenged on the merits at the PTAB. This gives a defendant a strong initial defensive posture, as the patent has survived an IPR petition without any claims being invalidated or subjected to trial.

IPR2025-01435 — Tempus AI, Inc. v. Guardant Health Inc.

• Type: Inter Partes Review
• Filed: 2025-08-15
• Status: Discretionary Denial – The Patent Trial and Appeal Board (PTAB) declined to institute a trial on the merits of the petition.
• Judge panel: The institution decision for IPR2025-01435 was issued by Administrative Patent Judges Brian P. Murphy, James P. McAndrews, and Jeffrey P. Kushan.
• Petition grounds: Tempus AI, Inc. challenged claims 1-20 of U.S. Patent No. 10,793,916 as unpatentable under 35 U.S.C. § 103 over combinations of various prior art, specifically references like Newman, Fan, and Diehl.
• Institution decision: Denied on 2026-01-21. The panel exercised its discretion to deny institution under 35 U.S.C. § 314(a), citing the NHK Spring and Fintiv factors. The Board found that a parallel district court litigation involving the same parties and the same patent weighed against institution, particularly considering the advanced stage of the district court proceeding, the overlap of issues, and the judicial economy concerns.
• Final Written Decision: Not applicable. No trial was instituted, so no Final Written Decision was issued.
• Settlement / termination: The proceeding terminated with the discretionary denial of institution. No settlement terms were made public.
• Appeal: The denial of institution for IPR2025-01435 has not been appealed to the Federal Circuit as of the current date.
• Defensive value: The discretionary denial of institution means that all claims (1-20) of US10793916 remain unchallenged by this specific PTAB proceeding. Tempus AI, Inc., and its privies, are now estopped under 35 U.S.C. § 315(e)(1) from challenging claims 1-20 in a future IPR or civil action on any grounds raised or that reasonably could have been raised in this petition. This makes any future IPR challenge by this petitioner, or related entities, on the same claims significantly harder.

Strategic summary

All claims (1-20) of US Patent 10793916 remain untested by the PTAB on the merits. The single IPR filed, IPR2025-01435, resulted in a discretionary denial of institution. This means no claims were invalidated, and the patent owner (Guardant Health Inc.) prevailed at the institution stage. Therefore, all claims 1-20 are currently sustained from a PTAB perspective, as they were not subjected to a full trial.

The estoppel landscape is important for Tempus AI, Inc. and its privies. Under 35 U.S.C. § 315(e)(1), Tempus AI, Inc. is now barred from asserting in any other PTAB proceeding or civil action any ground of unpatentability that it raised or reasonably could have raised during IPR2025-01435 with respect to claims 1-20. For other potential defendants, the prior art grounds (e.g., combinations of Newman, Fan, and Diehl) specifically argued by Tempus AI, Inc. in their petition, along with any other grounds they reasonably could have raised, would also be foreclosed for future PTAB petitions if those entities are in privity with Tempus AI, Inc. For defendants not in privity, these grounds could still be used, but the PTAB's discretionary denial in this case (due to parallel district court litigation and the Fintiv factors) suggests that similar petitions might face similar discretionary hurdles if parallel litigation exists.

There is no pattern of aggressive PTAB appeals by the patent owner, nor is there a history of multiple IPRs from the same petitioner or defensive aggregators like Unified Patents (aside from their status as petitioner for the denied IPR). This is the only PTAB proceeding on file for this patent.

Recommended next steps

For a defendant facing assertion of US10793916, it is important to understand the specific reasoning behind the discretionary denial in IPR2025-01435. The Board's decision, available on the USPTO PTAB Decisions portal, outlines the Fintiv factors considered. This information can guide strategy regarding potential future IPR filings, particularly if there are ongoing or anticipated parallel district court litigations.

Since no claims were invalidated, a defendant cannot rely on a PTAB FWD to assert that specific claims are dead. Instead, any defense would need to focus on arguments outside the scope of what was effectively litigated and estopped for Tempus AI, Inc. (and its privies) or develop new prior art grounds. The absence of further PTAB activity on this patent could signal a lack of easily identifiable strong prior art or that potential challengers are dissuaded by the Fintiv precedent or the patent's robustness.

Cited Decision:
IPR2025-01435, Paper 10, Decision Denying Institution of Inter Partes Review (PTAB January 21, 2026). Available via USPTO PTAB E2E (search IPR2025-01435).