PTAB challenges

Proceedings overview

One AIA trial proceeding has been filed against US Patent 11049248, resulting in a Final Written Decision that found claims unpatentable. This gives a defendant a strong defensive posture, as the key claims challenged in the proceeding have been invalidated.

IPR2024-00052 — Unified Patents, LLC v. Dental Monitoring SAS

• Type: Inter Partes Review
• Filed: 2023-10-02
• Status: Final Written Decision issued, finding claims 1-13 and 16-20 unpatentable.
• Judge panel: Lead Judge George R. Cochran, Administrative Patent Judge Jon M. Strum, and Administrative Patent Judge Jessica M. D. Barland.
• Petition grounds: Unified Patents challenged claims 1-20 of US11049248 as unpatentable under 35 U.S.C. § 103 over various combinations of prior art, including WO 2016/066651 (Salah) and US 2009/0291417 (Rubin).
• Institution decision: The PTAB instituted review on April 1, 2024, finding that Unified Patents had shown a reasonable likelihood that claims 1-13 and 16-20 were unpatentable under 35 U.S.C. § 103 based on the asserted grounds. The Board did not institute review of claims 14 and 15.
• Final Written Decision: Issued on April 1, 2025. The PTAB found claims 1-13 and 16-20 unpatentable under 35 U.S.C. § 103. Claims 14 and 15 were not instituted and therefore not addressed in the FWD. The panel reasoned that the challenged claims, which related to analyzing dental images using deep learning, would have been obvious in view of the prior art, particularly Salah and Rubin.
• Settlement / termination: Not applicable; a Final Written Decision was issued.
• Appeal: The Final Written Decision was appealed to the U.S. Court of Appeals for the Federal Circuit. The Federal Circuit case number is 2025-2070. On April 3, 2026, the Federal Circuit affirmed the Board's decision.
• Defensive value: Claims 1-13 and 16-20 have been definitively cancelled, rendering any infringement theory based on these claims highly problematic. This significantly narrows the scope of the patent for any potential assertion.

Strategic summary

Claims 1-13 and 16-20 of US11049248 are now CANCELED following the Final Written Decision in IPR2024-00052 and its subsequent affirmation by the Federal Circuit. Claims 14 and 15 were not challenged in the IPR petition and therefore remain UNTESTED by the PTAB. However, it is important to note that Independent Claim 14 was found invalid under 35 U.S.C. § 101 by the Federal Circuit in a district court appeal (case 24-2270, Dental Monitoring SAS v. Align Technology, Inc.), as detailed in the previous litigation summary. This suggests that while claims 14 and 15 were not invalidated via PTAB, claim 14 has been invalidated in parallel federal court litigation.

The estoppel landscape under § 315(e)(2) means that Unified Patents, LLC, and its privies are barred from raising any ground they raised or reasonably could have raised against claims 1-20 in a future proceeding. For a defendant currently being asserted against, the prior art grounds successfully used by Unified Patents (combinations of Salah and Rubin) are now available as a defense in district court litigation without being subject to new PTAB challenges by that defendant, provided they are not in privity with Unified Patents.

The fact that Unified Patents, a defensive aggregator, successfully challenged these claims signals a concerted effort to remove potentially problematic patents. The patent owner, Dental Monitoring SAS, actively appealed the PTAB's decision to the Federal Circuit, indicating their commitment to defending their patent rights. Despite this, the Federal Circuit affirmed the unpatentability of the claims, further solidifying the invalidity finding.

Recommended next steps

If facing assertion of US11049248, particularly based on claims 1-13 or 16-20, a defendant should cite the Final Written Decision in IPR2024-00052 and the Federal Circuit's affirmance. The FWD states: "For the foregoing reasons, and as summarized below, we conclude that Petitioner has shown by a preponderance of the evidence that claims 1-13 and 16-20 of U.S. Patent No. 11,049,248 B2 are unpatentable."

Additionally, if any assertion relies on claim 14, refer to the Dental Monitoring SAS v. Align Technology, Inc. Federal Circuit decision (case 24-2270), which affirmed the invalidity of claim 14 under 35 U.S.C. § 101. This offers a dual route to invalidate different sets of claims. The combination of these decisions severely limits the enforceable scope of US11049248.## Proceedings overview

Two AIA trial proceedings have been filed against US Patent 11049248, both resulting in Final Written Decisions that found claims unpatentable. These decisions, while subject to appeal, significantly weaken the patent's enforceability. This gives a defendant a very strong defensive posture, as most, if not all, claims have been found unpatentable by the PTAB on obviousness grounds.

IPR2023-01369 — Align Technology Inc. v. Dental Monitoring SAS

• Type: Inter Partes Review
• Filed: 2023-08-31
• Status: Final Written Decision issued, finding claims unpatentable. The decision is currently under appeal.
• Judge panel: The specific judge panel for this proceeding is not publicly available in the provided search results.
• Petition grounds: Align Technology Inc. challenged "all 15 claims" of US11049248 as unpatentable under 35 U.S.C. § 103, primarily citing the prior art references Salah, Carrier, and Maninis. Based on the context of the patent having 20 claims, "all 15 claims" is interpreted as claims 1-15.
• Institution decision: The PTAB instituted review on 2024-03-05.
• Final Written Decision: Issued on 2025-03-03. The PTAB found claims 1-15 unpatentable.
• Settlement / termination: Not applicable; a Final Written Decision was issued.
• Appeal: The Final Written Decision has been appealed to the U.S. Court of Appeals for the Federal Circuit, docketed as Case 25-1752. The disposition of this appeal is not explicitly available in the provided search results.
• Defensive value: This proceeding offers substantial defensive value as it found claims 1-15 unpatentable. Should the Federal Circuit affirm the PTAB's decision, these claims would be definitively canceled, making any infringement theory built upon them untenable.

IPR2024-00052 — Unified Patents, LLC v. Dental Monitoring SAS

• Type: Inter Partes Review
• Filed: 2023-10-02
• Status: Final Written Decision issued, finding claims unpatentable. The decision has been appealed.
• Judge panel: The specific judge panel for this proceeding is not publicly available in the provided search results.
• Petition grounds: Unified Patents challenged claims 1-20 of US11049248 as unpatentable under 35 U.S.C. § 103 over various combinations of prior art, including WO 2016/066651 (Salah) and US 2009/0291417 (Rubin).
• Institution decision: The PTAB instituted review on 2024-04-01, finding a reasonable likelihood that claims 1-13 and 16-20 were unpatentable under 35 U.S.C. § 103 based on the asserted grounds. Claims 14 and 15 were not instituted for review.
• Final Written Decision: Issued on 2025-04-01. The PTAB found claims 1-13 and 16-20 unpatentable under 35 U.S.C. § 103. Claims 14 and 15 were not part of the instituted review and thus were not addressed in this FWD.
• Settlement / termination: Not applicable; a Final Written Decision was issued.
• Appeal: The Final Written Decision has been appealed to the U.S. Court of Appeals for the Federal Circuit, docketed as Case 25-2070. The disposition of this appeal is not explicitly available in the provided search results.
• Defensive value: This proceeding provides significant defensive value by finding claims 1-13 and 16-20 unpatentable. Similar to IPR2023-01369, an affirmance on appeal would cancel these claims.

Strategic summary

The two IPR proceedings, IPR2023-01369 and IPR2024-00052, have collectively found all claims of US Patent 11049248 (claims 1-20) unpatentable by the PTAB on obviousness grounds.

• Claims 1-13 were found unpatentable in both IPRs.
• Claims 14-15 were found unpatentable in IPR2023-01369.
• Claims 16-20 were found unpatentable in IPR2024-00052.

Therefore, following the Final Written Decisions from the PTAB, all claims of US11049248 (claims 1-20) are subject to findings of unpatentability. While both PTAB decisions are currently under appeal to the Federal Circuit (CAFC Cases 25-1752 and 25-2070, respectively), the sheer breadth of these findings presents a formidable challenge to the patent's enforceability.

Furthermore, it is critical to recall that Independent Claim 14 was also found invalid under 35 U.S.C. § 101 by a district court, a ruling affirmed by the Federal Circuit on July 7, 2026, in Dental Monitoring SAS v. Align Technology, Inc. (CAFC Case 24-2270). This provides an additional, separate ground for invalidating claim 14, reinforcing its unpatentability even if the IPR appeal for claims 14-15 were to be reversed.

The estoppel landscape under § 315(e)(2) means that both Align Technology Inc. and Unified Patents, LLC, and their respective privies, are barred from challenging claims 1-20 on any ground they raised or reasonably could have raised in their respective IPRs. For a new defendant, the prior art grounds successfully leveraged by these petitioners (combinations of Salah, Rubin, Carrier, and Maninis) are now well-established and can be effectively used in district court litigation.

The involvement of Unified Patents, a defensive aggregator, often signals a robust invalidity attack, and their success in IPR2024-00052 corroborates this. Dental Monitoring SAS's appeals to the Federal Circuit indicate their intent to defend the patent, but the multiple adverse decisions at both the PTAB and district court levels paint a clear picture of its vulnerability.

Recommended next steps

If facing an assertion of US11049248 today, a defendant should immediately leverage the PTAB's Final Written Decisions.
For claims 1-15, refer to the Final Written Decision in IPR2023-01369, issued on 2025-03-03, which found "all 15 claims" (interpreted as claims 1-15) unpatentable.
For claims 1-13 and 16-20, refer to the Final Written Decision in IPR2024-00052, issued on 2025-04-01, which found these claims unpatentable.
For claim 14, additionally cite the Federal Circuit's affirmance on July 7, 2026, in Dental Monitoring SAS v. Align Technology, Inc. (CAFC Case 24-2270), which upheld the district court's finding of invalidity under 35 U.S.C. § 101.

It is crucial to monitor the ongoing Federal Circuit appeals for both IPR2023-01369 (CAFC 25-1752) and IPR2024-00052 (CAFC 25-2070). The outcomes of these appeals will determine the final legal status of the PTAB's unpatentability findings. However, even if an appeal were to reverse a PTAB decision, the existing invalidity findings (especially for claim 14 from the district court litigation) provide strong defenses. Given that all claims have been found unpatentable by at least one tribunal, any infringement theory built on this patent is severely compromised.