PTAB challenges

Proceedings overview

One AIA trial proceeding has been filed against US patent 8959146. This proceeding resulted in a discretionary denial, meaning no claims were challenged on the merits. This status indicates the patent has survived one attempt at IPR, but its claims remain untested by the PTAB.

IPR2025-01163 — Viant Technology LLC et al. v. Roy Shkedi

• Type: Inter Partes Review
• Filed: 2025-06-20
• Status: Discretionary Denial (The PTAB declined to institute review of the challenged claims).
• Judge panel: Not publicly available from the quick search results. Will search for institution decision.
  The judge panel information for IPR2025-01163 is not readily available through a general search for the proceeding number and "judge panel." While some judges like James A. Tartal, Ryan H. Flax, and Matthew J. McNeill are listed with "not instituted" cases in their profiles on Unified Patents, a direct link to the panel for IPR2025-01163 specifically is not found in the initial search results. Director decisions on discretionary denial can occur before a panel is assigned to the merits.
• Petition grounds: Details regarding the specific claims challenged and prior art cited are not available in the provided "PTAB proceedings on file" or the initial general web search results. To obtain this, one would typically need to access the petition documents themselves from the USPTO PTAB E2E system.
• Institution decision: Denied on 2026-01-13. The status "Discretionary Denial" indicates the PTAB declined to institute trial. This type of denial often occurs due to considerations like parallel litigation (Fintiv factors), settled expectations, or other workload management policies from the USPTO Director. As of March 2025, the USPTO Director (with at least three PTAB judges) first reviews cases for discretionary denial considerations before referring a petition to a three-member panel for a merits evaluation.
• Final Written Decision: Not issued, as the petition was denied institution.
• Settlement / termination: The proceeding terminated via discretionary denial, not settlement.
• Appeal: Not applicable, as no Final Written Decision was issued.
• Defensive value: This proceeding indicates that Viant Technology LLC et al. attempted to challenge the patent but were unsuccessful at the institution stage due to a discretionary denial. This means the patent owner successfully argued against institution, preserving all claims. For a defendant, this signals that IPR challenges can be met with discretionary denial arguments, particularly if the patent owner can demonstrate "settled expectations" or other factors favoring denial. However, the claims themselves have not been evaluated on their merits by the PTAB.

Strategic summary

All claims of US8959146 remain UNTESTED by the PTAB on their merits. The sole IPR filed, IPR2025-01163, was met with a discretionary denial, meaning the PTAB chose not to institute a trial. This does not validate the claims but rather reflects a procedural decision by the PTAB (potentially related to factors like parallel litigation, petitioner's conduct, or "settled expectations" as per recent Director guidance).

The estoppel landscape for IPR2025-01163 means that Petitioner Viant Technology LLC et al. (and any privies) are statutory barred under 35 U.S.C. § 315(e)(2) from asserting in future litigation or other USPTO proceedings any ground that they raised or reasonably could have raised in their IPR petition against US8959146. However, since the petition was denied, the merits of the patentability challenge were not decided, limiting the scope of what was "raised or reasonably could have been raised" for estoppel purposes. Other parties not in privity with Viant Technology LLC et al. would not be subject to this estoppel.

The fact that the IPR was denied institution, rather than proceeding to a merits decision, suggests the patent owner successfully leveraged procedural arguments to protect the patent from PTAB review. This could indicate a proactive strategy by the patent owner or highlight the increasing prevalence of discretionary denials based on evolving USPTO policies, such as the rescission of the Fintiv memo and new guidance on "settled expectations" from the Acting Director in 2025.

Recommended next steps

For a defendant facing assertion of US8959146 today, it is important to understand the basis of the discretionary denial in IPR2025-01163. Obtaining and reviewing the PTAB's Institution Decision for IPR2025-01163 via the USPTO PTAB E2E system would be crucial to understand the specific reasons for denial and the prior art and claims challenged.

Since the claims remain untested on the merits, a new IPR petition could potentially be filed by a different entity (or by Viant if new grounds/art are discovered and permissible) if a strong unpatentability argument can be developed while navigating the evolving discretionary denial standards. Consider the current landscape of PTAB discretionary denials, including the Acting Director's memos from March and October 2025, which have impacted how these decisions are made. An assessment of whether the petitioner in IPR2025-01163 could have "reasonably raised" other grounds, or if the denial was specific to the presented grounds or procedural issues, would inform future strategy.