PTAB challenges

Proceedings overview

There has been one AIA trial proceeding filed against US Patent 8228801. This proceeding, IPR2025-01381, resulted in a discretionary denial of institution, meaning no claims were invalidated or sustained by a Final Written Decision. For a defendant, this indicates that the patent's claims remain untested by an IPR and have not been narrowed by PTAB.

IPR2025-01381 — Red Hat, Inc. v. Eric M. Delangis

• Type: Inter Partes Review
• Filed: 2025-08-05
• Status: Discretionary Denial. The petition for inter partes review was denied institution by the PTAB.
• Judge panel: Information not publicly available without access to the full institution decision.
• Petition grounds: Specific claims and prior art grounds are not detailed in the public summary of a discretionary denial. Petitions generally challenge claims under 35 U.S.C. § 102 (novelty) and/or § 103 (obviousness) based on prior art.
• Institution decision: Denied (date of denial not specified in provided data, but typically follows within 6 months of filing). The denial was discretionary. Given that the patent's expiration date was 2025-01-22, and the IPR was filed on 2025-08-05 (after expiration), a common reason for discretionary denial in such cases is that the patent has already expired, reducing the urgency or controversy for the PTAB to act, especially if there is no co-pending litigation.
• Final Written Decision (if issued): Not issued, as institution was denied.
• Settlement / termination: Not applicable, as institution was denied.
• Appeal: No appeal to the Federal Circuit, as no Final Written Decision was issued.
• Defensive value: This proceeding indicates that Red Hat, Inc.'s challenge did not proceed to trial. The claims of US8228801 remain fully intact from a PTAB perspective, making an IPR-based defense harder as this specific challenge was denied. However, the reasons for denial (likely patent expiration) do not reflect on the merits of the patentability challenge itself.

Strategic summary

All claims of US8228801 remain untested by the PTAB. There are no claims that have been canceled or sustained through a Final Written Decision. The single IPR filed, IPR2025-01381, was discretionarily denied institution, likely due to the patent having expired prior to the petition filing date. This means that from a PTAB trial perspective, the patent has not been narrowed, and all claims are currently considered patentable as granted.

The estoppel landscape for this patent is broad because the IPR was denied institution. Under 35 U.S.C. § 315(e)(1) and (2), estoppel only applies to claims challenged in a patent that proceeds to a final written decision. Since IPR2025-01381 did not proceed to a final written decision, neither the petitioner (Red Hat, Inc.) nor its privies are estopped from raising prior-art grounds that they raised or reasonably could have raised in that petition. Therefore, any prior-art grounds are still available for a defendant facing assertion of this patent today. The petitioner was Red Hat, Inc., and the denial was discretionary.

Recommended next steps

As a defendant facing assertion of US8228801, it is important to understand that all claims of the patent are currently intact, as the sole IPR proceeding was denied institution. The discretionary denial, likely due to the patent's expiration on 2025-01-22 (before the IPR filing date of 2025-08-05), means there is no estoppel against future IPR challenges based on any prior art.

If you are considering an IPR, you should thoroughly investigate the specific reasons for the discretionary denial in IPR2025-01381 to understand if those same grounds would apply to a new petition. Given the patent's expired status, any new IPR petition would likely face similar scrutiny regarding the presence of an ongoing controversy or other compelling reasons for the PTAB to proceed.