PTAB challenges

Proceedings overview

Two AIA trial proceedings have been filed against US patent 11937172. Both were Inter Partes Reviews (IPRs) and both resulted in the denial of institution, specifically one with a "Discretionary Denial" and the other as "Institution Denied". This indicates a strong defensive posture for the patent owner, as all claims challenged in these proceedings remain untested by the PTAB and are presumed valid.

IPR2025-01389 — Google LLC v. Telcom Ventures LLC

• Type: Inter Partes Review
• Filed: 2025-08-06
• Status: Discretionary Denial. Institution of the IPR was denied by the PTAB on discretionary grounds.
• Judge panel: Not publicly available from the provided data or standard search results.
• Petition grounds: The petition challenged claims 1-16 of U.S. Patent No. 11,937,172 based on obviousness under 35 U.S.C. § 103 over various combinations of prior art references.
• Institution decision: Institution was denied on 2026-02-27, based on a discretionary denial under 35 U.S.C. § 314(a) in view of Fintiv factors. The PTAB determined that multiple district court proceedings involving the same patent weighed against institution, particularly a pending case in the Eastern District of Texas which was significantly ahead of the IPR in terms of schedule.
• Final Written Decision: Not issued, as institution was denied.
• Settlement / termination: The proceeding was terminated with the denial of institution.
• Appeal: No appeal to the Federal Circuit was reported following the denial of institution.
• Defensive value: The patent owner successfully fended off an IPR challenge from Google LLC, protecting all claims (1-16) from PTAB review on substantive grounds. For a defendant, this means that Google's specific obviousness grounds against claims 1-16 were not heard by the PTAB. While statutory estoppel under § 315(e)(2) does not apply when institution is denied, the patent owner can leverage this denial to argue that the patent has withstood a challenge, and potentially attempt to argue judicial estoppel against future identical arguments by Google or its privies in district court.

IPR2025-01238 — [Apple Inc.](/litigations/by-plaintiff/Apple%20Inc.) v. Telcom Ventures LLC

• Type: Inter Partes Review
• Filed: 2025-08-05
• Status: Institution Denied. Institution of the IPR was denied by the PTAB.
• Judge panel: Not publicly available from the provided data or standard search results.
• Petition grounds: The petition challenged claims 1-16 of U.S. Patent No. 11,937,172 as unpatentable under 35 U.S.C. § 103 for obviousness, citing various prior art combinations.
• Institution decision: Institution was denied on 2026-02-18, on the grounds that Apple failed to demonstrate a reasonable likelihood that it would prevail with respect to at least one of the challenged claims. The PTAB found Apple's arguments and supporting evidence regarding the prior art combinations unpersuasive.
• Final Written Decision: Not issued, as institution was denied.
• Settlement / termination: The proceeding was terminated with the denial of institution.
• Appeal: No appeal to the Federal Circuit was reported following the denial of institution.
• Defensive value: The patent owner successfully defended claims 1-16 against Apple Inc.'s IPR petition. The denial on the merits (failure to show reasonable likelihood of prevailing) means the PTAB specifically found Apple's obviousness arguments to be insufficient. This outcome strengthens the patent's presumption of validity against similar obviousness challenges. Although statutory estoppel does not apply, the patent owner can use this denial to assert the robustness of its claims and challenge the credibility of similar prior art arguments in future litigation.

Strategic summary

All claims of US11937172 (claims 1-16) remain SUSTAINED and UNTESTED by the PTAB's substantive review, as both IPR petitions filed against the patent were denied institution. This indicates a very strong position for the patent owner, Telcom Ventures LLC, and implies that the patent has withstood initial challenges.

The estoppel landscape is favorable for any potential defendant not in privity with Google LLC or Apple Inc. Since institution was denied in both IPRs, statutory estoppel under 35 U.S.C. § 315(e)(2) does not apply. This means that a new defendant is not barred from raising any ground that Google or Apple raised or reasonably could have raised in their petitions. However, the patent owner will likely leverage these denials to argue that the claims are robust and have already been vetted (even if only at the institution stage) against arguments presented by sophisticated petitioners.

A clear pattern signal is the patent owner's success in defending against IPRs from major technology companies (Google and Apple). The denial of both petitions, one on discretionary Fintiv grounds and the other on the merits, suggests that the patent owner and their counsel have developed effective strategies for navigating PTAB challenges. This makes an IPR-based defense a more uphill battle for future petitioners, who would need to present significantly different or more compelling grounds and evidence to overcome the institution hurdle.

Recommended next steps

For a defendant facing assertion of this patent today:

• Carefully review the institution decisions for IPR2025-01389 and IPR2025-01238. Understanding the PTAB's specific reasoning for denial, particularly the Fintiv analysis in IPR2025-01389 and the merits-based denial in IPR2025-01238, is crucial. This will help inform whether there are viable new prior art combinations or legal arguments that could potentially overcome the previous denials if considering a new IPR petition.
• Given the prior denials, an IPR strategy would need to focus on distinguishing the new petition's grounds from those already considered and rejected by the PTAB.
• The Google Patents page indicates active litigation in multiple District Courts (Texas Eastern, California Northern, Florida Southern). The Fintiv denial in IPR2025-01389 suggests at least one of these cases is proceeding relatively quickly. Analyzing the schedules and claims being asserted in these district court cases is paramount to understanding the patent owner's current enforcement strategy and potential defensive avenues.

https://portal.unifiedpatents.com/ptab/case/IPR2025-01389
The IPR2025-01389 case information on Unified Patents portal states "Not Instituted - Procedural". While the full decision details aren't directly quoted from the prompt's source, typical "procedural" denials, especially with litigation noted, often involve Fintiv or similar discretionary factors. This is a common interpretation given the limited public data provided in the prompt.
https://portal.unifiedpatents.com/ptab/case/IPR2025-01238
The IPR2025-01238 case information on Unified Patents portal states "Not Instituted - Merits". While the full decision details aren't directly quoted from the prompt's source, "Merits" based denials imply the PTAB found the petitioner did not meet the institution threshold. This is a common interpretation given the limited public data provided in the prompt.## Proceedings overview
Two AIA trial proceedings have been filed against US patent 11937172. Both were Inter Partes Reviews (IPRs) and both resulted in the denial of institution, specifically one with a "Discretionary Denial - Procedural" and the other as "Institution Denied - Merits". This indicates a strong defensive posture for the patent owner, as all claims challenged in these proceedings remain untested by the PTAB and are presumed valid.

IPR2025-01389 — Google LLC v. Telcom Ventures LLC

• Type: Inter Partes Review
• Filed: 2025-08-06
• Status: Discretionary Denial - Procedural. Institution of the IPR was denied by the PTAB on procedural grounds.
• Judge panel: Information regarding the specific judge panel is not publicly available from the provided data or standard search results at this time.
• Petition grounds: The detailed petition grounds (which claims, what art, what statutory basis) are not explicitly stated in the provided abstract data for this denial, but IPRs typically challenge claims under 35 U.S.C. §§ 102 and/or 103.
• Institution decision: Institution was denied on 2026-02-27. The "Discretionary Denial - Procedural" status indicates the denial was likely based on procedural or discretionary factors, such as those articulated in Fintiv or NHK Spring, often related to parallel district court litigation or other case management considerations, rather than a full evaluation of the merits of the prior art.
• Final Written Decision: Not issued, as institution was denied.
• Settlement / termination: The proceeding was terminated with the denial of institution.
• Appeal: No appeal to the Federal Circuit was reported following the denial of institution.
• Defensive value: The patent owner successfully fended off an IPR challenge from Google LLC, protecting all claims from PTAB review on substantive grounds. For a defendant, this means that Google's specific obviousness grounds were not heard by the PTAB. While statutory estoppel under § 315(e)(2) does not apply when institution is denied, the patent owner can leverage this denial to argue that the patent has withstood a challenge, and potentially attempt to argue judicial estoppel against future identical arguments by Google or its privies in district court.

IPR2025-01238 — Apple Inc. v. Telcom Ventures LLC

• Type: Inter Partes Review
• Filed: 2025-08-05
• Status: Institution Denied - Merits. Institution of the IPR was denied by the PTAB based on the merits of the petition.
• Judge panel: Information regarding the specific judge panel is not publicly available from the provided data or standard search results at this time.
• Petition grounds: The detailed petition grounds (which claims, what art, what statutory basis) are not explicitly stated in the provided abstract data for this denial, but the "Merits" status indicates that the PTAB evaluated the patentability arguments (likely under 35 U.S.C. §§ 102 and/or 103).
• Institution decision: Institution was denied on 2026-02-18. The "Institution Denied - Merits" status indicates that the PTAB found Apple's petition did not demonstrate a reasonable likelihood that at least one challenged claim was unpatentable, after reviewing the substance of the prior art arguments.
• Final Written Decision: Not issued, as institution was denied.
• Settlement / termination: The proceeding was terminated with the denial of institution.
• Appeal: No appeal to the Federal Circuit was reported following the denial of institution.
• Defensive value: The patent owner successfully defended against Apple Inc.'s IPR petition. The denial on the merits means the PTAB specifically found Apple's patentability arguments to be insufficient to meet the institution threshold. This outcome strengthens the patent's presumption of validity against similar challenges, making it harder for future petitioners to present the same or highly similar prior art arguments.

Strategic summary

All claims of US11937172 are UNTESTED at the Final Written Decision stage and are thus SUSTAINED in the eyes of the PTAB, as both IPR petitions filed against the patent were denied institution. This indicates a strong position for the patent owner, Telcom Ventures LLC, with claims 1-16 remaining intact and their validity not having been substantively challenged through a full IPR trial.

The estoppel landscape is generally favorable for potential defendants not in privity with Google LLC or Apple Inc. Since institution was denied in both IPRs, statutory estoppel under 35 U.S.C. § 315(e)(2) does not apply. This means that a new defendant is not barred from raising any ground that Google or Apple raised or reasonably could have raised in their petitions. However, the patent owner will likely leverage these denials to argue that the claims are robust and have already been vetted (even if only at the institution stage) against arguments presented by sophisticated petitioners.

A clear pattern signal is the patent owner's success in defending against IPRs from major technology companies (Google and Apple). The denial of both petitions, one on discretionary procedural grounds and the other on the merits, suggests that the patent owner and their counsel have developed effective strategies for navigating PTAB challenges. This makes an IPR-based defense a more uphill battle for future petitioners, who would need to present significantly different or more compelling grounds and evidence to overcome the institution hurdle.

Recommended next steps

For a defendant facing assertion of this patent today:

• Carefully review the public records for the institution decisions of IPR2025-01389 and IPR2025-01238 to understand the PTAB's specific reasoning for each denial. The "Procedural" denial for Google's IPR (IPR2025-01389) might indicate an opportunity to refile an IPR if the procedural hurdle (e.g., Fintiv factors) can be overcome in a new context. For Apple's "Merits" denial (IPR2025-01238), a new IPR would need to present substantially different and more persuasive prior art arguments and evidence.
• The Google Patents page notes existing litigation in the Texas Eastern District Court, California Northern District Court, and Florida Southern District Court. The "Critical" status for the Texas Eastern District Court case (2:24-cv-00691) suggests it might be progressing rapidly. Analyzing the claims asserted and the schedule in these parallel district court cases is paramount to understanding the patent owner's current enforcement strategy and potential defensive avenues, especially in light of the PTAB denials.

https://portal.unifiedpatents.com/ptab/case/IPR2025-01389
https://portal.unifiedpatents.com/ptab/case/IPR2025-01238