PTAB challenges

Proceedings overview

One Inter Partes Review (IPR) proceeding has been filed against US Patent 8,738,103 and is currently pending. This means the patent's claims are still undergoing review, and no claims have been invalidated or sustained by a final written decision from the PTAB. Therefore, the patent's validity in light of this IPR is currently uncertain, and its defensive posture for a defendant facing assertion remains largely dependent on the eventual outcome of this pending proceeding.

IPR2026-00338 — Johnson Controls Inc. v. Fractus S.A.

• Type: Inter Partes Review
• Filed: 2026-04-21
• Status: Pending — The proceeding is active and has not yet reached a final institution decision or final written decision.
• Judge panel: Information regarding the specific judge panel for this pending IPR is not yet publicly available through standard PTAB search interfaces at this early stage.
• Petition grounds: Details of the specific claims challenged, prior art relied upon, and statutory bases (e.g., § 102 for anticipation, § 103 for obviousness) will be elaborated in the petition, which is typically made public after institution. As of the current date, the petition has been filed but an institution decision has not yet been rendered.
• Institution decision: Not yet issued. The PTAB has a statutory deadline of six months from the preliminary response (or waiver thereof) to decide whether to institute review.
• Final Written Decision: Not yet issued, as the case is pending institution.
• Settlement / termination: Not yet applicable, as the case is pending.
• Appeal: Not yet applicable, as no Final Written Decision has been issued.
• Defensive value: As this IPR is currently pending, its defensive value is prospective. If instituted and successful, it could lead to the cancellation of claims, significantly weakening the patent owner's position. For now, it indicates that at least one party (Johnson Controls Inc.) believes the patent's claims are vulnerable to invalidation based on prior art. A defendant should closely monitor this proceeding for updates, particularly the institution decision and the grounds on which it is based.

Strategic summary

Currently, all claims of US 8,738,103 remain UNTESTED by a final PTAB decision. While a previous IPR (IPR2024-00087) was filed by Unified Patents, it was terminated due to a settlement, meaning no claims were adjudicated as unpatentable or patentable by the PTAB in that instance. The newly filed IPR2026-00338 by Johnson Controls Inc. is still in its early stages, with no institution decision yet rendered.

The estoppel landscape under § 315(e)(2) is not yet applicable for IPR2026-00338 as no final written decision has been issued. However, for any defendant considering filing their own IPR, it is crucial to review the petition and potentially the preliminary response and patent owner's response for IPR2026-00338, once publicly available, to understand the prior art and arguments being raised. The settlement of IPR2024-00087 means that Unified Patents (and its privies) are estopped from raising grounds they raised or reasonably could have raised in that proceeding. The new IPR by Johnson Controls Inc. indicates a continued challenge to Fractus's patent portfolio. Fractus S.A. has a history of aggressive patent assertion and engagement in PTAB proceedings, as evidenced by the earlier IPR settlement and their broader litigation activities.

Recommended next steps

A defendant currently facing assertion of US 8,738,103 should:

1. Monitor IPR2026-00338 closely: Track the institution decision, which is the next critical milestone. The PTAB typically issues an institution decision within six months of the patent owner's preliminary response. The USPTO's PTAB End-to-End system (E2E) is the best source for real-time updates and documents.
2. Review the petition for IPR2026-00338: Once publicly available (e.g., after institution), carefully analyze the grounds, claims challenged, and prior art asserted by Johnson Controls Inc. This will provide insight into potential weaknesses of the patent and identify prior art that could be relevant to your own defense strategy.
3. Assess prior IPR2024-00087: Although settled, obtaining and reviewing the petition from IPR2024-00087 (Unified Patents v. Fractus S.A.) could still be valuable to understand previous challenges, the prior art considered, and potential estoppel implications if your entity is somehow in privy with Unified Patents. Information on this case can be found on the Unified Patents PTAB Data portal (https://portal.unifiedpatents.com/ptab/case/IPR2024-00087).
4. Evaluate claims cited in demand letter: Cross-reference the claims asserted in any demand letter or litigation with the claims challenged in IPR2026-00338. If the asserted claims are under review, the outcome of the IPR will directly impact the strength of the assertion.
5. Consider a stay of litigation: If IPR2026-00338 is instituted, a defendant in district court litigation might consider moving for a stay of proceedings pending the outcome of the IPR, as this could lead to the invalidation of asserted claims and simplify or resolve the district court case.

USPTO PTAB E2E Search: https://ptab.uspto.gov/#/search/documents?searchTerm=IPR2026-00338 (as of 2026-05-29, the institution decision is pending).