PTAB challenges

Proceedings overview

Two AIA trial proceedings have been filed against US patent 11286168. One IPR (IPR2025-01455) was discretionarily denied, and the other (IPR2025-01454) is currently in trial. This leaves a defendant in a defensive posture where a portion of the patent remains under challenge, but one attempt to invalidate claims was unsuccessful based on procedural grounds rather than the merits.

IPR2025-01455 — Topsoe, Inc. et al. v. Casale SA

• Type: Inter Partes Review
• Filed: 2025-08-22
• Status: Discretionary Denial (The PTAB decided not to institute the review, often based on factors other than the merits of the patentability challenge).
• Judge panel: John A. Squires (cited as Director)
• Petition grounds: The petition challenged claims 1, 3-6, 8-19 of US 11,286,168 B2 based on 35 U.S.C. § 102 (Terrien) and 35 U.S.C. § 103 (Terrien and Ordinary Knowledge, Terrien and Price, among others).
• Institution decision: Denied on 2025-12-18. The denial was discretionary, under the "Interim Process for PTAB Workload Management" guidance. The decision noted that Topsoe, Inc. (Petitioner) had filed two inter partes review petitions against the same claims of the '168 patent on the same day, ranking IPR2025-01454 first and this petition, IPR2025-01455, second. The Petitioner stipulated that only one petition should be instituted. Therefore, the Director decided to deny institution of IPR2025-01455, allowing the first-ranked petition to proceed if instituted on the merits. The denial was not based on the Fintiv factors, but rather on the Petitioner's strategy for parallel petitions and the Director's new centralized institution decision process.
• Final Written Decision: Not issued, as institution was denied.
• Settlement / termination: Not applicable; terminated by discretionary denial.
• Appeal: Not applicable.
• Defensive value: This proceeding indicates that Casale SA successfully avoided a second parallel IPR challenge on procedural grounds. While the merits of the challenged claims were not assessed, the discretionary denial means these specific grounds were not fully litigated and therefore may not create estoppel for other parties or in other contexts.

IPR2025-01454 — Topsoe, Inc. et al. v. Casale SA

• Type: Inter Partes Review
• Filed: 2025-08-22
• Status: Trial Instituted (The PTAB has decided to proceed with a full review of the challenged claims).
• Judge panel: Information on the specific panel is not explicitly public in the search results, but John A. Squires is the Director who oversees institution decisions. Initial review for discretionary denial considerations would have occurred under the Director, after which it would be referred to a three-member panel for a decision on the merits and statutory considerations.
• Petition grounds: The petition challenges claims 1-11 and 17-19 of US 11,286,168 B2. Specific prior art references include "2007 IFA," "Rytter," and "Fjellhaug" for arguments of anticipation and obviousness under 35 U.S.C. §§ 102 and 103.
• Institution decision: Instituted. The exact date of institution is not explicitly stated in the provided snippets, but the status indicates trial has been instituted. The preliminary response from the Patent Owner aimed to deny institution based on arguments against the sufficiency of the petition's claim construction and the applicability of the cited prior art.
• Final Written Decision: Not yet issued. The statutory deadline for a Final Written Decision is generally one year from the institution date. Given the petition was filed on 2025-08-22 and the status is "Trial Instituted," the FWD would be expected around late 2026 or early 2027.
• Settlement / termination: No information on settlement or termination has been found.
• Appeal: Not applicable, as no Final Written Decision has been issued.
• Defensive value: This active proceeding means that claims 1-11 and 17-19 of US 11,286,168 B2 are currently being reviewed for patentability. The outcome will directly impact the scope and enforceability of these claims. Any assertion relying on these claims carries inherent risk until the FWD is issued.

Strategic summary

Currently, claims 1-11 and 17-19 of US 11,286,168 are UNTESTED on their merits by the PTAB in IPR2025-01455 due to a discretionary denial. However, the same claims, or a subset thereof, specifically claims 1-11 and 17-19, are currently UNDER REVIEW in IPR2025-01454 where trial has been instituted. This means that these claims are actively challenged and their patentability is in question. The remaining claims (claims 20-23) of the patent have not been challenged in these IPRs and are therefore UNTESTED by the PTAB.

Regarding estoppel, 35 U.S.C. § 315(e)(2) generally bars a petitioner and its privies from asserting in a civil action or ITC proceeding that a claim is invalid on any ground that the petitioner raised or reasonably could have raised during an IPR. In the case of IPR2025-01455, the petition was discretionarily denied, not on the merits, but due to the presence of a parallel, first-ranked petition (IPR2025-01454) by the same petitioner. Therefore, the estoppel implications for IPR2025-01455 are minimal, as no merits decision was reached. For IPR2025-01454, if a final written decision issues, estoppel will apply to Topsoe, Inc. and its privies for any grounds raised or that reasonably could have been raised against claims 1-11 and 17-19. Other defendants not in privity with Topsoe, Inc. would generally not be estopped from raising the same or different prior art grounds. The Federal Circuit has clarified that IPR estoppel applies only to invalidity grounds based on patents or printed publications and does not preclude other invalidity theories.

The pattern signals indicate that Topsoe, Inc. has aggressively pursued challenges against this patent, filing two IPRs on the same day. The patent owner, Casale SA, successfully argued for a discretionary denial of one of these, strategically limiting the parallel challenges. This suggests a contested patent landscape.

Recommended next steps

For a defendant currently being asserted against claims 1-11 and 17-19 of US 11,286,168 B2, the most important development is the ongoing IPR2025-01454. Monitor this proceeding closely for its Final Written Decision. The PTAB typically has a one-year statutory deadline from institution to issue a Final Written Decision. Since the institution decision date is not yet specified, and the filing date was 2025-08-22, the Final Written Decision is expected around late 2026 or early 2027.

The arguments made by Topsoe, Inc. in IPR2025-01454, particularly those relating to "2007 IFA," "Rytter," and "Fjellhaug", should be carefully reviewed. If the defendant is considering its own IPR, it should assess whether different prior art or different invalidity theories could be advanced, particularly for the untested claims (20-23) or if the grounds in IPR2025-01454 are ultimately unsuccessful.## Proceedings overview

Two AIA trial proceedings have been filed against US patent 11286168. One Inter Partes Review (IPR2025-01455) was discretionarily denied, while the other (IPR2025-01454) is currently in the trial stage. This means that a defendant faces a patent that has survived one challenge on procedural grounds and is actively engaged in another IPR concerning specific claims.

IPR2025-01454 — Topsoe, Inc. et al. v. Casale SA

• Type: Inter Partes Review
• Filed: 2025-08-22
• Status: Trial Instituted (The PTAB has decided to proceed with a full review of the challenged claims).
• Judge panel: Information regarding the specific Administrative Patent Judges on the panel is not publicly available in the search results at this time. However, institution decisions, especially discretionary ones, are subject to review and determination by the USPTO Director, John A. Squires, who consults with at least three PTAB judges.
• Petition grounds: The petition challenges claims 1-11 and 17-19 of US Patent 11,286,168 B2. The specific prior art references cited include "2007 IFA," "Rytter," and "Fjellhaug," forming the basis for alleged unpatentability under 35 U.S.C. §§ 102 and 103.
• Institution decision: Instituted. The precise date of the institution decision is not available in the provided snippets. Patent Owner's preliminary response argued against institution, challenging the Petitioner's claim construction and the applicability of the cited prior art.
• Final Written Decision: Not yet issued. The PTAB has a statutory deadline to issue a Final Written Decision within one year of institution, potentially extended by up to six months for good cause. Given the filing date of 2025-08-22, a Final Written Decision is anticipated in late 2026 or early 2027.
• Settlement / termination: No information regarding settlement or termination has been found.
• Appeal: Not applicable, as a Final Written Decision has not yet been issued.
• Defensive value: This proceeding is currently active, challenging key claims of the patent. If the challenged claims are found unpatentable, it would significantly narrow the scope of the patent. If the claims are upheld, it would strengthen Casale SA's position. Any infringement assertions involving claims 1-11 or 17-19 should be carefully monitored in light of this ongoing review.

IPR2025-01455 — Topsoe, Inc. et al. v. Casale SA

• Type: Inter Partes Review
• Filed: 2025-08-22
• Status: Discretionary Denial (The PTAB declined to institute the review, specifically under the USPTO's "Interim Process for PTAB Workload Management" and Director review process).
• Judge panel: John A. Squires (cited as Director).
• Petition grounds: The petition sought to challenge claims 1, 3-6, 8-19 of US Patent 11,286,168 B2 under 35 U.S.C. § 102 (Terrien) and 35 U.S.C. § 103 (Terrien and Ordinary Knowledge, Terrien and Price, among others).
• Institution decision: Denied on 2025-12-18. The denial was discretionary and stemmed from the Petitioner, Topsoe, Inc., filing two IPR petitions (IPR2025-01454 and IPR2025-01455) against the same claims of the '168 patent on the same day. Petitioner stipulated that only one petition should be instituted. The Director, consistent with recent guidance for parallel petitions and workload management, chose to deny the second-ranked petition (IPR2025-01455) while allowing the first-ranked (IPR2025-01454) to proceed for a merits determination.
• Final Written Decision: Not issued, as institution was denied.
• Settlement / termination: Not applicable; the proceeding concluded with a discretionary denial.
• Appeal: Not applicable.
• Defensive value: This proceeding indicates that Casale SA successfully navigated a second parallel IPR challenge on procedural grounds. Since the denial was discretionary and not on the merits of patentability, no estoppel attaches to the grounds raised in this specific petition. This outcome does not strengthen or weaken the patent's validity on the merits but demonstrates the patent owner's ability to defend against multiple simultaneous challenges.

Strategic summary

Claims 1-11 and 17-19 of US Patent 11,286,168 are currently UNDER REVIEW in IPR2025-01454, while the challenge to the same claims in IPR2025-01455 was DISCRETIONARILY DENIED. The remaining claims (20-23) are UNTESTED by the PTAB. The patent's enforceability regarding claims 1-11 and 17-19 remains uncertain until the Final Written Decision in IPR2025-01454.

The estoppel landscape is relatively clear. For IPR2025-01455, as institution was discretionarily denied, no estoppel should apply to Topsoe, Inc. or its privies for the grounds raised, as there was no merits-based decision. For IPR2025-01454, if a Final Written Decision issues finding claims unpatentable or patentable, Topsoe, Inc. and its privies will be estopped under 35 U.S.C. § 315(e)(2) from asserting in other forums any ground that was raised or reasonably could have been raised against claims 1-11 and 17-19. Other potential defendants not in privity with Topsoe, Inc. would retain the ability to challenge the patent using prior art, including the grounds raised by Topsoe, Inc., or different ones. It is important to remember that IPR estoppel is limited to grounds based on patents or printed publications.

The pattern of filings by Topsoe, Inc. (filing two IPRs on the same day) suggests a concerted effort to challenge the patent. The patent owner's successful discretionary denial in IPR2025-01455 demonstrates their active engagement in defending the patent at the PTAB.

Recommended next steps

If you are a defendant facing assertions regarding US Patent 11,286,168, particularly claims 1-11 and 17-19, closely monitor the ongoing IPR2025-01454. The Final Written Decision for this proceeding is expected by late 2026 or early 2027, one year after its institution (which followed its 2025-08-22 filing date). The outcome will directly impact the validity of these claims.

Consider evaluating the prior art and arguments presented in IPR2025-01454, specifically those related to "2007 IFA," "Rytter," and "Fjellhaug". If the patent claims are invalidated, this will provide a strong defense against assertion. If they are upheld, it will be crucial to identify new and distinct prior art or invalidity theories (e.g., under 35 U.S.C. § 101 or § 112, if applicable) not raised or reasonably raisable in the IPRs, especially for the untested claims 20-23. The proceedings for IPR2025-01454 can be monitored via the USPTO PTAB E2E system.