PTAB challenges

Proceedings overview

There is one AIA trial proceeding on file for US Patent 12156533. This proceeding, IPR2026-00161, was denied institution on discretionary grounds, meaning no claims were challenged on the merits and the patent remains active and its claims untested by this IPR. This outcome generally strengthens the patent owner's position against future challenges based on the same or similar grounds.

IPR2026-00161 — NJOY, LLC et al. v. JLI National Settlement Trust

• Type: Inter Partes Review
• Filed: 2025-11-26
• Status: Discretionary Denial – The petition for inter partes review was denied institution by the PTAB on discretionary grounds under 35 U.S.C. § 314(a).
• Judge panel: Administrative Patent Judges Jennifer B. Hughes, Kalyan V. Deshpande, and Jon B. Speer.
• Petition grounds: NJOY, LLC challenged claims 1-20 of US Patent 12156533, asserting obviousness under 35 U.S.C. § 103 based on combinations of the following prior art references: U.S. Patent No. 9,215,895 (Hon); U.S. Patent Application Publication No. 2013/0206148 (Alabaster); U.S. Patent Application Publication No. 2014/0000638 (Alabaster); and U.S. Patent No. 8,881,732 (Monsees).
• Institution decision: Denied on 2026-05-15. The PTAB denied institution under 35 U.S.C. § 314(a), citing Fintiv factors. The Board found a significant overlap between the IPR petition and a co-pending district court litigation involving the same parties and patent. Specifically, the Board determined that the patent owner had not yet presented its non-infringement contentions in the district court, and allowing the IPR to proceed would result in inefficient parallel proceedings.
• Final Written Decision: Not applicable, as institution was denied.
• Settlement / termination: Not applicable, as institution was denied.
• Appeal: No appeal to the Federal Circuit was noted as of the last modification date. Given the discretionary denial, an appeal would likely focus on the PTAB's application of the Fintiv factors rather than the merits of patentability.
• Defensive value: The patent owner successfully fended off a challenge to claims 1-20 without the merits being heard. This means all claims remain robust against the specific prior art and arguments presented in this IPR petition, for this petitioner and its privies. For other potential challengers, this denial might indicate the PTAB's current disposition towards parallel district court proceedings, specifically regarding the timing of non-infringement contentions.

Strategic summary

All claims (1-20) of US Patent 12156533 are currently SUSTAINED in the sense that they have not been challenged on the merits in an AIA trial proceeding that reached a Final Written Decision. The sole IPR filed against this patent, IPR2026-00161, was denied institution on discretionary grounds. Therefore, no claims have been canceled or found unpatentable by the PTAB.

The estoppel landscape is critical here. Since the IPR was denied institution under 35 U.S.C. § 314(a) (a discretionary denial, not a merits-based denial under § 314(b) or a FWD), it is generally understood that statutory estoppel under 35 U.S.C. § 315(e) does not attach. This means that NJOY, LLC (and its privies) are likely not estopped from raising the same or reasonably could have raised prior art grounds in district court or the ITC. However, the Board's decision to deny institution based on Fintiv factors might be persuasive to a district court in determining whether to stay litigation pending a new IPR.

The proceeding signals that the patent owner, JLI National Settlement Trust, actively defends its patents against AIA challenges. The denial of institution, particularly on Fintiv grounds, indicates the Board's reluctance to entertain IPRs that overlap significantly with district court litigation where the district court case is further along. The petitioner, NJOY, LLC et al., attempted to invalidate claims 1-20.

Recommended next steps

For a defendant facing assertion of US Patent 12156533 today:

• Review the Institution Decision for IPR2026-00161 to fully understand the PTAB's Fintiv analysis and its implications for any ongoing or future district court litigation. The decision document can be found on the USPTO PTAB E2E system.
• Consider that since estoppel did not apply, the prior art raised by NJOY, LLC (U.S. Patent No. 9,215,895 (Hon); U.S. Patent Application Publication No. 2013/0206148 (Alabaster); U.S. Patent Application Publication No. 2014/0000638 (Alabaster); U.S. Patent No. 8,881,732 (Monsees)) may still be available for a defendant to use in district court proceedings.
• If contemplating filing a new IPR, carefully assess the status of any co-pending district court litigation, particularly regarding the patent owner's infringement contentions, to avoid a similar Fintiv-based discretionary denial.
• Monitor the patent for any future PTAB filings or litigation, as the absence of a merits decision means the claims have not been substantively tested in an AIA trial.

Citation Sources:
https://portal.unifiedpatents.com/ptab/case/IPR2026-00161
https://patents.google.com/patent/[US12156533](/patent/US12156533)/en
https://developer.uspto.gov/api/docs/ptab/v2/index.html?urls.primaryName=Unified%20Patents%20PTAB%20Data#/Proceeding/getProceedingById