PTAB challenges

Proceedings overview

There is one AIA trial proceeding on file for US Patent 11195058, which is currently in a "Discretionary Denial" status. This indicates that the PTAB declined to institute a full review of the challenged claims. For a defendant facing assertion of this patent, this means the patent has survived one IPR attempt and its claims remain unadjudicated on the merits at the PTAB.

IPR2025-01359 — Zesty.ai, Inc. v. Aon Benfield Inc.

• Type: Inter Partes Review
• Filed: 2025-07-30
• Status: Discretionary Denial. The PTAB declined to institute the Inter Partes Review, meaning a full trial on the merits of the patentability challenge will not proceed.
• Judge panel: Not publicly available in the provided information. However, recent USPTO policy indicates the Director makes institution decisions in consultation with at least three PTAB judges.
• Petition grounds: The specific claims challenged and prior art asserted are not publicly available in the provided information. However, Zesty.ai Inc. is involved in a district court patent infringement case with Aon Re Inc. (an assignee of Aon Benfield Inc.) concerning US11195058, where Zesty.ai Inc. has argued that Aon's patents (which cover analyzing aerial imagery using machine learning for property risk assessment) are invalid under 35 U.S.C. § 101 for covering an abstract idea. It is possible the IPR petition included similar grounds, though IPRs typically focus on §§ 102 and 103.
• Institution decision: Denied on 2025-12-23. The denial was discretionary. Since October 20, 2025, the Director of the USPTO has the authority to personally decide whether to institute IPRs, considering discretionary factors, merits, and non-discretionary issues. One common discretionary denial factor is "settled expectations," which considers the length of time the patent has been in force. The patent US11195058 was granted on December 7, 2021, and the IPR was filed on July 30, 2025. This means the patent had been in force for approximately 3.5 years when the IPR was filed, which might have played a role in the discretionary denial, although the specific reasoning for the denial in this case is not detailed in the provided information. Generally, a patent in force for six years or more is more likely to be subject to discretionary denial based on settled expectations.
• Final Written Decision: Not issued, as institution was denied.
• Settlement / termination: Not applicable, as institution was denied.
• Appeal: Not applicable, as institution was denied. Institution decisions are generally unappealable to the Federal Circuit.
• Defensive value: This discretionary denial means that the claims of US11195058 challenged in IPR2025-01359 were not adjudicated on the merits at the PTAB. Therefore, a defendant facing assertion of this patent would need to pursue other avenues for invalidity challenges (e.g., in district court), as these claims were not found unpatentable by the PTAB.

Strategic summary

Only one AIA trial proceeding, IPR2025-01359, has been filed against US Patent 11195058. This IPR was denied institution on discretionary grounds, meaning the PTAB did not reach the merits of the patentability challenge. Therefore, all claims of US11195058 remain untested at the PTAB. Aon Benfield Inc. (or its assignee Aon Re Inc.) is the Patent Owner.

The estoppel landscape remains open for a defendant. Since institution was denied, the petitioner (Zesty.ai, Inc.) and its privies are not estopped under 35 U.S.C. § 315(e)(2) from raising any invalidity ground that was raised or reasonably could have been raised in the IPR. This means that a defendant facing assertion of this patent could still challenge the validity of all claims of US11195058 using any available prior art grounds (§ 102 or § 103) in other forums, such as district court.

The denial of institution in IPR2025-01359 suggests that the PTAB, under its recent policy shifts, may be becoming a less welcoming forum for petitioners, especially concerning older patents or those where "settled expectations" are a factor. While US11195058 is not particularly old, the trend in PTAB discretionary denials can still influence petitioner strategies. It is notable that Zesty.ai, Inc. is also a defendant in a district court patent infringement case brought by Aon Re Inc. (assignee of Aon Benfield Inc.) concerning this patent.

Recommended next steps

Given that the IPR was denied institution, the claims of US11195058 have not been adjudicated for patentability at the PTAB. A defendant would need to pursue invalidity challenges in district court. The district court case Aon Re Inc. v. Zesty.ai, Inc. (Case No. 1:25-cv-00201, D. Del.) is ongoing. Zesty.ai has already filed a motion to dismiss in this case, arguing the patents are invalid under 35 U.S.C. § 101. Defendants can utilize the USPTO Patent Public Search tool to search for prior art.