PTAB challenges

Proceedings overview

A single AIA trial proceeding, PGR2025-00070, has been filed against US patent 12133078. This proceeding was instituted and subsequently terminated due to settlement. As no claims were invalidated by a Final Written Decision, the patent remains unhardened but also without any claims canceled through this PTAB process.

PGR2025-00070 — Be Smarter, LLC et al. v. Yondr, Inc.

• Type: Post-Grant Review (PGR)
• Filed: 2025-07-29
• Status: Terminated-Settled. This means the parties reached an agreement and the proceeding was concluded without a final decision on the merits.
• Judge panel: Frederick C. Laney is listed as a panel judge for this case.
• Petition grounds: The exact claims challenged, specific prior art, and statutory bases (e.g., § 101, § 102, § 103, § 112) for the petition are not publicly available in the provided search snippets. However, the petition was filed by Be Smarter, LLC and James Guerra against Yondr, Inc., the patent owner. Patent Owner Yondr, Inc. had asserted patent US12133078 against the petitioner in a district court case (U.S. District Court for the Western District of Texas, Case No. 1:24-cv-01326-ADA), where the petitioner also filed counterclaims for invalidity of the patent.
• Institution decision: The petition was instituted on 2026-01-27. The specific reasoning for institution is not available in the provided snippets, but institution indicates the Board found a reasonable likelihood that at least one challenged claim is unpatentable.
• Final Written Decision: No Final Written Decision was issued for this proceeding due to its settlement status.
• Settlement / termination: The proceeding terminated due to settlement on 2026-04-14. The specific terms of the settlement are confidential and are not disclosed in the public records.
• Appeal: No appeal to the Federal Circuit occurred, as the case was terminated by settlement before a Final Written Decision.
• Defensive value: This proceeding shows that a third party (Be Smarter, LLC) considered the patent vulnerable enough to file a PGR petition, and the PTAB found sufficient merit to institute the review. The subsequent settlement means the patent's claims were not adjudicated as unpatentable by the PTAB. For a defendant, this means the patent owner chose to settle rather than risk a final decision on patentability before the Board, but also that no claims were canceled.

Strategic summary

Currently, no claims of US patent 12133078 have been formally canceled or sustained by a Final Written Decision from the PTAB. All claims of the patent remain legally "untested" by a final PTAB adjudication on the merits. The sole PGR proceeding, PGR2025-00070, was instituted but settled, leaving the patent's validity in PTAB unadjudicated.

Regarding the estoppel landscape, since PGR2025-00070 terminated via settlement and no Final Written Decision was issued, the statutory estoppel provisions of 35 U.S.C. § 315(e)(2) do not formally apply to the public at large. However, the petitioner (Be Smarter, LLC et al.) would likely be subject to contractual estoppel based on the terms of their private settlement agreement with Yondr, Inc., which are not public. Other potential challengers are not directly estopped by this settlement and could theoretically bring similar or different prior-art grounds against the patent.

The patent owner, Yondr, Inc., appears to be actively asserting this patent in district court litigation, as evidenced by the related case mentioned in the PGR filings where the patent was asserted against Be Smarter, LLC. The settlement of the PGR proceeding suggests a strategic decision by both parties, possibly to resolve ongoing litigation, rather than allow the PTAB to rule on the patent's validity. There is no public indication of a defensive aggregator like Unified Patents being the petitioner in this specific case, though Unified Patents' portal did provide some case details. JPMorgan Chase Bank, N.A. holds a security interest in the patent.

Recommended next steps

Given that PGR2025-00070 was instituted, the Board believed there was a reasonable likelihood that at least one claim was unpatentable. However, the subsequent settlement means no claims were ultimately invalidated. For a defendant facing assertion of this patent, it is important to:

1. Investigate the Petition for PGR2025-00070: While the full document is not publicly available in the provided snippets, access to the petition (if permissible and obtainable) could reveal the specific arguments and prior art that the PTAB found sufficient to institute a review. This could provide valuable insights into potential weaknesses of the patent.
2. Evaluate claims: As no claims were canceled, all claims of US12133078 remain active. A thorough analysis of the claims and any new prior art should be conducted to determine if there are other viable challenges, especially considering the institution of the prior PGR.
3. Monitor related litigation: Yondr, Inc. has asserted this patent in district court. Monitoring the progress and outcome of any ongoing litigation involving US12133078 will be crucial to understand the patent's strength and the patent owner's enforcement strategy.