PTAB challenges

Proceedings overview

A single AIA trial proceeding, IPR2025-01126, has been filed against US Patent 12096973. This proceeding resulted in a discretionary denial of institution, meaning no claims were invalidated or sustained on the merits by the PTAB. This outcome leaves all claims of the patent untested by the PTAB, indicating a relatively strong defensive posture for the patent owner against future IPRs on the same (or similar) grounds by the same petitioner or its privies.

IPR2025-01126 — Aerin Medical Inc. v. Neurent Medical Ltd

• Type: Inter Partes Review
• Filed: 2025-06-25
• Status: Discretionary Denial — the PTAB declined to institute the IPR based on discretionary factors, not on the merits of patentability.
• Judge panel: Judges Kim Vo, Bryan F. Moore, and Jeffrey P. Kushan.
• Petition grounds: Aerin Medical Inc. challenged claims 1-20 of US Patent 12,096,973 as unpatentable under 35 U.S.C. § 103 over various combinations of prior art, including US Patent No. 10,772,990 (Hahn), US Patent No. 10,632,328 (Hahn), and US Patent Publication No. 2018/0235728 (Townley).
• Institution decision: Denied on 2025-12-23. The panel exercised its discretion to deny institution under 35 U.S.C. § 314(a) and 37 C.F.R. § 42.108(a) based on factors derived from Fintiv Inc. v. [Apple Inc.](/litigations/by-plaintiff/Apple%20Inc.). The Board's reasoning centered on the advanced stage of parallel district court litigation between the same parties involving the same patent. The denial was procedural, not a decision on the patentability of the claims.
• Final Written Decision: Not issued, as institution was denied.
• Settlement / termination: The proceeding terminated with the discretionary denial of institution. There was no settlement related to the IPR itself.
• Appeal: Not applicable, as there was no Final Written Decision to appeal.
• Defensive value: The discretionary denial means claims 1-20 of US12096973 have not been substantively reviewed or invalidated by the PTAB. Any infringement theories built on these claims remain intact from a PTAB perspective. For Aerin Medical Inc. and its privies, estoppel under 35 U.S.C. § 315(e)(1) may apply to the grounds raised in their petition, preventing them from raising the same invalidity grounds in district court or future PTAB proceedings that could have been raised in this IPR. However, because no FWD was issued, the precise scope of estoppel for a discretionary denial is often debated and depends on specific facts and legal interpretation.

Strategic summary

All claims (1-20) of US12096973 remain UNTESTED by the PTAB on their merits. The sole IPR filed, IPR2025-01126, was discretionarily denied institution due to the parallel district court litigation, not because the petition failed to demonstrate a reasonable likelihood of success on the merits. This means that, from a PTAB standpoint, the patent has not been narrowed or challenged on its patentability.

Regarding the estoppel landscape, 35 U.S.C. § 315(e)(1) states that "The petitioner in an inter partes review... that results in a final written decision... may not request or maintain a subsequent proceeding before the Office... or assert invalidity... in any civil action... on any ground that the petitioner raised or reasonably could have raised during that inter partes review." In this case, there was no Final Written Decision. However, for a petitioner who filed a petition, section 315(e)(2) regarding estoppel for civil actions applies to grounds raised. The specific implications of a Fintiv discretionary denial on petitioner estoppel in subsequent district court litigation can be complex and are often litigated. Generally, a defendant facing assertion of this patent (who is not Aerin Medical Inc. or its privy) still has all prior-art grounds available for an IPR challenge.

There is no pattern of multiple IPRs by the same petitioner on this patent, nor has the patent owner been aggressively pursuing PTAB appeals, as no institution or FWD occurred. The petitioner, Aerin Medical Inc., appears to be a direct competitor or party in a dispute, indicated by the district court litigation context of the Fintiv denial.

Recommended next steps

• Since IPR2025-01126 resulted in a discretionary denial and no claims were invalidated, all claims of US12096973 are currently considered patentable by the PTAB in the absence of a merits decision.
• Any defendant facing assertion of this patent should carefully review the Board's decision for IPR2025-01126 (available on the USPTO PTAB Decisions portal: https://developer.uspto.gov/ptab-decisions/Ipr2025-01126). Understanding the specific Fintiv factors that led to the denial can inform strategy. For example, if the denial was heavily weighted on the advanced stage of district court proceedings, a new IPR petition filed earlier in a parallel litigation might face a different discretionary analysis.
• For any new potential petitioner (not Aerin Medical or its privies), all prior art grounds remain available for challenging claims 1-20 of US12096973 in a new IPR. The absence of a merits-based PTAB decision means the patent has not been "hardened" against substantive invalidity arguments.

Note: The specific legal interpretation of estoppel following a discretionary denial can vary and may require consultation with legal counsel.