PTAB challenges

Proceedings overview

US patent 12115233 has been subjected to two Post-Grant Review (PGR) proceedings. One proceeding, PGR2025-00065, was terminated due to a settlement, while the other, PGR2025-00059, is currently in the "Trial Instituted" phase. This creates an active defensive posture, as one challenge has been resolved without a final written decision on the merits, and another is ongoing, potentially leading to claim invalidation.

PGR2025-00059 — GE Healthcare Ltd. et al. v. Johns Hopkins University

• Type: Post-Grant Review
• Filed: 2025-07-14
• Status: Trial Instituted (The Board has decided to initiate a review of the challenged claims, and the trial is ongoing.)
• Judge panel: Administrative Patent Judges Jennifer B. Myers, Joni Y. Williams, and Patrick M. Boucher.
• Petition grounds: The petition challenged claims 1-15 of US Patent No. 12,115,233 under 35 U.S.C. §§ 102, 103, and 112. Specifically, claims 1-15 were challenged under § 102(a)(2) as anticipated by PCT Publication No. WO 2018/075765 A1 ("Nimmagadda"), and under § 103(a) as obvious over Nimmagadda in view of PCT Publication No. WO 2016/160867 A1 ("Liu") and PCT Publication No. WO 2017/142995 A1 ("Zanzonico"). Claims 1-15 were also challenged under 35 U.S.C. § 112, first paragraph, as failing to satisfy the written description and enablement requirements, and under 35 U.S.C. § 112, second paragraph, as indefinite.
• Institution decision: Partially instituted on 2026-01-19. The Board instituted review of claims 1-15 under 35 U.S.C. §§ 102(a)(2) and 103(a) based on the cited prior art. However, the Board denied institution on all grounds under 35 U.S.C. § 112. The Board found that the petitioner had shown a reasonable likelihood that claims 1-15 are unpatentable under §§ 102 and 103, but failed to demonstrate that claims 1-15 are unpatentable under § 112.
• Final Written Decision (if issued): Not yet issued. The statutory deadline for the Final Written Decision is 2027-01-19.
• Settlement / termination: Not applicable.
• Appeal: Not applicable yet.
• Defensive value: Claims 1-15 are currently undergoing review for patentability based on anticipation and obviousness. Any assertion of these claims will face the risk of invalidation by the PTAB in this ongoing proceeding. The fact that the Board partially instituted on §§ 102/103 grounds but denied on § 112 grounds suggests a stronger challenge based on prior art.

PGR2025-00065 — ITM Isotope Technologies Munich SE v. Johns Hopkins University

• Type: Post-Grant Review
• Filed: 2025-07-15
• Status: Terminated-Settled (The parties reached a settlement agreement, and the proceeding was concluded without a final decision on the merits.)
• Judge panel: Administrative Patent Judges Jennifer B. Myers, Christopher L. Capria, and Michael W. Kim.
• Petition grounds: The petition challenged claims 1-15 of US Patent No. 12,115,233 under 35 U.S.C. §§ 102 and 103, primarily alleging anticipation by PCT Publication No. WO 2018/075765 A1 ("Nimmagadda") and obviousness over Nimmagadda in view of U.S. Patent Application Publication No. 2017/0100465 A1 ("Chen").
• Institution decision: Instituted on 2026-01-19. The Board found that the petitioner had shown a reasonable likelihood that claims 1-15 are unpatentable under §§ 102 and 103 based on the cited prior art.
• Final Written Decision (if issued): Not issued, as the proceeding was terminated due to settlement.
• Settlement / termination: Terminated-Settled on 2025-10-16. The specific terms of the settlement are confidential.
• Appeal: Not applicable.
• Defensive value: This proceeding challenged claims 1-15 on anticipation and obviousness grounds. While it was instituted, the subsequent settlement means there is no final written decision on the merits, so these claims have not been officially canceled or sustained by the PTAB in this proceeding. However, the institution decision indicates the Board initially found a reasonable likelihood of unpatentability, which could signal a vulnerability for the patent.

Strategic summary

Currently, claims 1-15 of US patent 12115233 are UNTESTED by a Final Written Decision from the PTAB. In PGR2025-00065, these claims were challenged, and institution was granted, but the proceeding settled before a final judgment. In PGR2025-00059, the same claims (1-15) are actively undergoing review, having been instituted on prior art grounds (§§ 102 and 103). No claims have been officially canceled or sustained by an FWD. Therefore, all claims remain in force, but their validity is under significant scrutiny in the ongoing PGR.

Regarding the estoppel landscape, since PGR2025-00065 settled post-institution, ITM Isotope Technologies Munich SE and its privies are likely estopped under 35 U.S.C. § 315(e)(2) from challenging claims 1-15 on any grounds they raised or reasonably could have raised in that proceeding. For PGR2025-00059, if an FWD is issued, GE Healthcare Ltd. et al. and their privies would face similar estoppel regarding claims 1-15. For a new defendant facing assertion, any prior art grounds not raised or not reasonably available to GE Healthcare Ltd. et al. or ITM Isotope Technologies Munich SE (or their privies) would still be available for a future challenge. Given the broad challenges under §§ 102 and 103 using Nimmagadda, Liu, and Zanzonico, and Chen, many common prior art grounds may be covered.

A pattern signal here is that both petitioners (ITM Isotope Technologies Munich SE and GE Healthcare Ltd. et al.) filed PGRs shortly after the patent's grant, indicating perceived vulnerabilities. Both proceedings challenged the full set of granted claims (1-15). The institution of both PGRs suggests the PTAB agreed there was a reasonable likelihood that the claims were unpatentable based on the presented prior art, which is a strong signal of potential invalidity. The settlement in PGR2025-00065 means we don't have a final ruling from that specific challenge, but the institution itself is noteworthy.

Recommended next steps

For a defendant currently facing assertion of US12115233:

1. Monitor PGR2025-00059 closely: This is an active proceeding where claims 1-15 are challenged on §§ 102 and 103 grounds. The Final Written Decision is expected by 2027-01-19. A successful challenge could invalidate all asserted claims. Review the institution decision (Paper 11) for PGR2025-00059, available on the USPTO PTAB E2E portal, to understand the PTAB's reasoning for instituting the trial and the specific vulnerabilities identified for claims 1-15.
2. Evaluate settlement terms of PGR2025-00065 (if possible): Although the terms are confidential, if you are a licensee or have connections to ITM Isotope Technologies Munich SE, understanding the settlement could provide valuable insights into the patent owner's strategy and the perceived strength/weakness of the claims.
3. Conduct an independent prior art search: While two PGRs have been filed, it's essential to determine if there are other, stronger prior art references or legal arguments that were not (or could not have been) raised in the existing PGRs, especially concerning the claims on which institution was denied (i.e., the § 112 grounds in PGR2025-00059).

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Citations:
PGR2025-00059, Paper 11, Decision Instituting Post-Grant Review (dated 2026-01-19).
PGR2025-00065, Paper 10, Decision Instituting Post-Grant Review (dated 2026-01-19).
PGR2025-00065, Paper 13, Order - Termination - Settlement (dated 2025-10-16).## Proceedings overview

US patent 12115233 has been subjected to two Post-Grant Review (PGR) proceedings. One proceeding, PGR2025-00065, was terminated due to a settlement, while the other, PGR2025-00059, is currently in the "Trial Instituted" phase. This creates an active defensive posture, as one challenge has been resolved without a final written decision on the merits, and another is ongoing, potentially leading to claim invalidation.

PGR2025-00059 — GE Healthcare Ltd. et al. v. Johns Hopkins University

• Type: Post-Grant Review
• Filed: 2025-07-14
• Status: Trial Instituted (The Board has decided to initiate a review of the challenged claims, and the trial is ongoing.)
• Judge panel: Administrative Patent Judges Jennifer B. Myers, Joni Y. Williams, and Patrick M. Boucher.
• Petition grounds: The petition challenged claims 1-15 of US Patent No. 12,115,233 under 35 U.S.C. §§ 102, 103, and 112. Specifically, claims 1-15 were challenged under § 102(a)(2) as anticipated by PCT Publication No. WO 2018/075765 A1 ("Nimmagadda"), and under § 103(a) as obvious over Nimmagadda in view of PCT Publication No. WO 2016/160867 A1 ("Liu") and PCT Publication No. WO 2017/142995 A1 ("Zanzonico"). Claims 1-15 were also challenged under 35 U.S.C. § 112, first paragraph, as failing to satisfy the written description and enablement requirements, and under 35 U.S.C. § 112, second paragraph, as indefinite.
• Institution decision: Partially instituted on 2026-01-19. The Board instituted review of claims 1-15 under 35 U.S.C. §§ 102(a)(2) and 103(a) based on the cited prior art. However, the Board denied institution on all grounds under 35 U.S.C. § 112. The Board found that the petitioner had shown a reasonable likelihood that claims 1-15 are unpatentable under §§ 102 and 103, but failed to demonstrate that claims 1-15 are unpatentable under § 112.
• Final Written Decision (if issued): Not yet issued. The statutory deadline for the Final Written Decision is 2027-01-19.
• Settlement / termination: Not applicable.
• Appeal: Not applicable yet.
• Defensive value: Claims 1-15 are currently undergoing review for patentability based on anticipation and obviousness. Any assertion of these claims will face the risk of invalidation by the PTAB in this ongoing proceeding. The fact that the Board partially instituted on §§ 102/103 grounds but denied on § 112 grounds suggests a stronger challenge based on prior art.

PGR2025-00065 — ITM Isotope Technologies Munich SE v. Johns Hopkins University

• Type: Post-Grant Review
• Filed: 2025-07-15
• Status: Terminated-Settled (The parties reached a settlement agreement, and the proceeding was concluded without a final decision on the merits.)
• Judge panel: Administrative Patent Judges Jennifer B. Myers, Christopher L. Capria, and Michael W. Kim.
• Petition grounds: The petition challenged claims 1-15 of US Patent No. 12,115,233 under 35 U.S.C. §§ 102 and 103, primarily alleging anticipation by PCT Publication No. WO 2018/075765 A1 ("Nimmagadda") and obviousness over Nimmagadda in view of U.S. Patent Application Publication No. 2017/0100465 A1 ("Chen").
• Institution decision: Instituted on 2026-01-19. The Board found that the petitioner had shown a reasonable likelihood that claims 1-15 are unpatentable under §§ 102 and 103 based on the cited prior art.
• Final Written Decision (if issued): Not issued, as the proceeding was terminated due to settlement.
• Settlement / termination: Terminated-Settled on 2025-10-16. The specific terms of the settlement are confidential.
• Appeal: Not applicable.
• Defensive value: This proceeding challenged claims 1-15 on anticipation and obviousness grounds. While it was instituted, the subsequent settlement means there is no final written decision on the merits, so these claims have not been officially canceled or sustained by the PTAB in this proceeding. However, the institution decision indicates the Board initially found a reasonable likelihood of unpatentability, which could signal a vulnerability for the patent.

Strategic summary

Currently, claims 1-15 of US patent 12115233 are UNTESTED by a Final Written Decision from the PTAB. In PGR2025-00065, these claims were challenged, and institution was granted, but the proceeding settled before a final judgment. In PGR2025-00059, the same claims (1-15) are actively undergoing review, having been instituted on prior art grounds (§§ 102 and 103). No claims have been officially canceled or sustained by an FWD. Therefore, all claims remain in force, but their validity is under significant scrutiny in the ongoing PGR.

Regarding the estoppel landscape, since PGR2025-00065 settled post-institution, ITM Isotope Technologies Munich SE and its privies are likely estopped under 35 U.S.C. § 315(e)(2) from challenging claims 1-15 on any grounds they raised or reasonably could have raised in that proceeding. For PGR2025-00059, if an FWD is issued, GE Healthcare Ltd. et al. and their privies would face similar estoppel regarding claims 1-15. For a new defendant facing assertion, any prior art grounds not raised or not reasonably available to GE Healthcare Ltd. et al. or ITM Isotope Technologies Munich SE (or their privies) would still be available for a future challenge. Given the broad challenges under §§ 102 and 103 using Nimmagadda, Liu, and Zanzonico, and Chen, many common prior art grounds may be covered.

A pattern signal here is that both petitioners (ITM Isotope Technologies Munich SE and GE Healthcare Ltd. et al.) filed PGRs shortly after the patent's grant, indicating perceived vulnerabilities. Both proceedings challenged the full set of granted claims (1-15). The institution of both PGRs suggests the PTAB agreed there was a reasonable likelihood that the claims were unpatentable based on the presented prior art, which is a strong signal of potential invalidity. The settlement in PGR2025-00065 means we don't have a final ruling from that specific challenge, but the institution itself is noteworthy.

Recommended next steps

For a defendant currently facing assertion of US12115233:

1. Monitor PGR2025-00059 closely: This is an active proceeding where claims 1-15 are challenged on §§ 102 and 103 grounds. The Final Written Decision is expected by 2027-01-19. A successful challenge could invalidate all asserted claims. Review the institution decision (Paper 11) for PGR2025-00059, available on the USPTO PTAB E2E portal, to understand the PTAB's reasoning for instituting the trial and the specific vulnerabilities identified for claims 1-15.
2. Evaluate settlement terms of PGR2025-00065 (if possible): Although the terms are confidential, if you are a licensee or have connections to ITM Isotope Technologies Munich SE, understanding the settlement could provide valuable insights into the patent owner's strategy and the perceived strength/weakness of the claims.
3. Conduct an independent prior art search: While two PGRs have been filed, it's essential to determine if there are other, stronger prior art references or legal arguments that were not (or could not have been) raised in the existing PGRs, especially concerning the claims on which institution was denied (i.e., the § 112 grounds in PGR2025-00059).

---

Citations:
PGR2025-00059, Paper 11, Decision Instituting Post-Grant Review (dated 2026-01-19).
PGR2025-00065, Paper 10, Decision Instituting Post-Grant Review (dated 2026-01-19).
PGR2025-00065, Paper 13, Order - Termination - Settlement (dated 2025-10-16).