PTAB challenges

Proceedings overview

One AIA trial proceeding has been filed against US Patent 11149306, which resulted in a discretionary denial. This outcome means the patent's claims remain untested by this specific IPR challenge, and the patent owner's position is strengthened as the patent has successfully fended off one PTAB challenge.

IPR2025-01434 — Tempus AI, Inc. v. Guardant Health Inc.

• Type: Inter Partes Review
• Filed: 2025-08-15
• Status: Discretionary Denial. The PTAB declined to institute the IPR based on discretionary factors.
• Judge panel: Administrative Patent Judges Brian P. Murphy, James P. McAndrews, and John F. Kelly.
• Petition grounds: Tempus AI, Inc. challenged claims 1-20 of U.S. Patent No. 11,149,306 on grounds of obviousness under 35 U.S.C. § 103(a) over combinations of prior art. The primary references asserted were Wagle, et al. (Wagle) and Newman, et al. (Newman).
• Institution decision: Denied on 2026-01-21. The panel exercised its discretion to deny institution under 35 U.S.C. § 314(a) based on the factors articulated in Fintiv. Specifically, the Board found that the petitioner had demonstrated that the patent owner had asserted claims of the '306 patent in a co-pending district court litigation, Guardant Health, Inc. v. Tempus AI, Inc., No. 1:24-cv-00687 (D. Del.), where the trial was scheduled to begin before the PTAB's statutory deadline for a Final Written Decision in the IPR. The panel considered the advanced stage of the district court litigation, the overlap of issues, and the investment in the district court proceeding, concluding that denial was appropriate to avoid inefficient duplication of efforts.
• Final Written Decision: Not applicable as institution was denied.
• Settlement / termination: Not applicable. The proceeding was terminated by discretionary denial.
• Appeal: Not yet applicable. The 63-day period for appeal to the Federal Circuit from a decision on institution has not yet passed as of today's date (2026-05-22).
• Defensive value: This denial significantly strengthens the patent owner's position against future IPR challenges by Tempus AI, Inc. (and potentially its privies) on the same grounds or grounds that could have been raised in this petition. For other potential defendants, this specific denial highlights the PTAB's use of Fintiv factors, suggesting that timing relative to district court litigation is a critical consideration for IPR petitioners.

Strategic summary

All claims (1-20) of US patent 11149306 remain UNTESTED by the PTAB. The sole IPR filed, IPR2025-01434, was denied institution based on the PTAB's discretionary authority under 35 U.S.C. § 314(a), particularly applying the Fintiv factors. This means no claims were canceled or sustained by the PTAB in this proceeding.

Regarding the estoppel landscape, 35 U.S.C. § 315(e)(1) for instituted claims and § 315(e)(2) for claims that could have been reasonably raised are key. In this case, since the IPR was not instituted, the direct estoppel provisions of § 315(e) typically do not apply to Tempus AI, Inc. This allows Tempus AI, Inc. (and its privies) to potentially raise the same invalidity grounds in district court, although the PTAB's reasoning for discretionary denial might influence the district court's view on the merits or efficient adjudication. For other potential defendants, all prior-art grounds remain available for challenge, subject to their own specific circumstances and the Fintiv factors if they were to file a new IPR.

The petitioner, Tempus AI, Inc., is also the defendant in a co-pending district court litigation. The discretionary denial under Fintiv signals a PTAB policy to defer to district court proceedings when they are at an advanced stage and involve overlapping issues. Unified Patents is noted in the Google Patents record as a petitioner for IPR2025-01434, indicating potential defensive aggregator involvement, though the PTAB decision itself lists Tempus AI, Inc. as the petitioner.

Recommended next steps

• Since IPR2025-01434 was denied institution, all claims of US11149306 remain intact and have not been substantively reviewed by the PTAB. This outcome strengthens the patent owner's position.
• If you are a defendant facing assertion of this patent by Guardant Health Inc., be aware that the PTAB's discretionary denial in IPR2025-01434 (Decision on Institution, Paper 9, dated 2026-01-21) demonstrates the patent owner's ability to navigate PTAB challenges, particularly when concurrent district court litigation is underway.
• Potential future petitioners should carefully consider the Fintiv factors, especially the stage of any related district court litigation, before filing an IPR petition against this patent.
• As of today, 2026-05-22, the period to appeal the institution decision of IPR2025-01434 to the Federal Circuit is still open. Monitor the case docket for any appeal activity.
• There are no other active PTAB proceedings on file for this patent. The absence of further challenges, particularly after a denial of institution, could suggest a perception of strength for the patent or a shift in challenger strategy towards district court.
• Consult the full PTAB Decision on Institution for IPR2025-01434 for a comprehensive understanding of the Board's reasoning: https://developer.uspto.gov/ptab-api/documents/IPR2025-01434/9