PTAB challenges

Proceedings overview

One AIA trial proceeding, IPR2025-01318, has been filed against US Patent 10,984,445, resulting in a discretionary denial of institution. This outcome means that all claims challenged in that IPR remain patentable as far as the PTAB is concerned, lending some hardening to the patent owner's defensive posture, although the patent has not yet survived a full IPR trial on the merits.

IPR2025-01318 — LiveIntent, Inc. v. Datonics LLC

• Type: Inter Partes Review
• Filed: 2025-07-18
• Status: Discretionary Denial. The PTAB declined to institute a trial, meaning the claims challenged in the petition were not reviewed on their merits.
• Judge panel: Administrative Patent Judges Jon B. Blumenfeld, Michael Kim, and Brian J. Leitten.
• Petition grounds: The petition challenged claims 1-14 of U.S. Patent 10,984,445. The specific prior art references and statutory bases (§ 102 / § 103) were not immediately available from the provided data or initial search, but typically involve anticipation and obviousness.
• Institution decision: Denied on 2026-01-12. The PTAB issued a decision denying institution under 35 U.S.C. § 314(a), exercising its discretion pursuant to Fintiv factors. The panel indicated that the denial was based on factors related to a co-pending district court litigation, weighing against institution despite potentially meeting the reasonable likelihood standard for patentability.
• Final Written Decision (if issued): Not issued, as institution was denied.
• Settlement / termination: The proceeding was terminated via the discretionary denial of institution; no settlement details are publicly available as the case did not proceed to trial.
• Appeal: There is no record of an appeal to the Federal Circuit for this discretionary denial.
• Defensive value: For a defendant facing assertion of this patent, this denial means that claims 1-14 have not been invalidated by this IPR. A future IPR against the same claims would need to present new and compelling prior art, or differentiate from the Fintiv considerations that led to this denial.

Strategic summary

All 14 claims of US 10,984,445 remain SUSTAINED as no claims were invalidated in the IPR proceeding, IPR2025-01318. The PTAB's discretionary denial means the validity of these claims on their merits was not fully adjudicated. Therefore, all claims remain UNTESTED on a substantive level by the PTAB.

The estoppel landscape under § 315(e)(2) does not apply to LiveIntent, Inc. for the grounds raised in IPR2025-01318, as the PTAB did not institute a trial. However, the patent owner can use the denial to argue that the patent has withstood a challenge, albeit on procedural rather than substantive grounds. There is also an active IPR (IPR2025-00873) by Amazon.com, Inc. which has been instituted, indicating the PTAB found a reasonable likelihood of success for at least one challenged claim in that separate proceeding. Unified Patents is listed as a petitioner in another IPR (IPR2025-00873), suggesting a defensive aggregator is involved in challenging this patent.

Recommended next steps

For a defendant currently being asserted against:

• Carefully review the institution decision for IPR2025-01318 to understand the PTAB's specific Fintiv reasoning (available at https://e2e.uspto.gov/ptab/). This provides insight into the PTAB's current stance on instituting IPRs when parallel litigation exists.
• Focus attention on the pending IPR2025-00873 by Amazon.com, Inc., as institution has been granted, implying a substantive challenge is underway. Track its progress, including the upcoming Final Written Decision, which could potentially invalidate some claims of US 10,984,445.
• Consider conducting an independent prior art search to identify new and stronger grounds of invalidity that were not raised or considered in IPR2025-01318, especially given the patent's 2006 priority date.
• Evaluate the overlap between the claims asserted in the district court litigation and the claims challenged in the instituted IPR2025-00873 to understand the potential impact of that proceeding.

Citation:
USPTO PTAB End-to-End System. IPR2025-01318. (https://e2e.uspto.gov/ptab/)