PTAB challenges

Proceedings overview

Two AIA trial proceedings have been filed against US Patent 9,651,533. One petition was denied institution, and one is currently in the trial phase. This indicates that the patent has faced some challenge, but its claims have not yet been invalidated in an AIA trial. For a defendant, this means the patent's validity is still actively being tested, and potential invalidation of claims is pending.

IPR2025-01250 — SAMSUNG ELECTRONICS CO., LTD. et al. v. Omni Medsci Inc

• Type: Inter Partes Review
• Filed: 2025-08-05
• Status: Trial Instituted (the PTAB has decided to review the patentability of the challenged claims)
• Judge panel: Undisclosed in public records at this time.
• Petition grounds: A petition for IPR typically challenges claims under 35 U.S.C. §§ 102 and/or 103 based on prior art patents and printed publications. Without the institution decision, specific claims and prior art challenged are not publicly known, but the status "Trial Instituted" confirms that the PTAB found a reasonable likelihood that at least one challenged claim is unpatentable.
• Institution decision: Instituted. The institution decision was issued by the PTAB on May 20, 2026. The PTAB institutes trial when it determines that the petitioner has demonstrated a reasonable likelihood that at least one of the challenged claims is unpatentable.
• Final Written Decision (if issued): Not yet issued. The trial is ongoing.
• Settlement / termination: No settlement or termination has been publicly reported.
• Appeal: Not applicable yet as no Final Written Decision has been issued.
• Defensive value: This proceeding indicates that some claims of US9651533 are currently undergoing a validity challenge at the PTAB. If a defendant is being asserted against, the outcome of this IPR could be highly impactful, potentially invalidating claims relevant to an alleged infringement. Monitoring this proceeding is crucial. The Final Written Decision is due by May 20, 2027, one year from institution.

IPR2025-01583 — WHOOP, Inc. v. Omni Medsci Inc

• Type: Inter Partes Review
• Filed: 2025-09-26
• Status: Discretionary Denial (the PTAB declined to institute a trial)
• Judge panel: Undisclosed in public records at this time.
• Petition grounds: A petition for IPR typically challenges claims under 35 U.S.C. §§ 102 and/or 103 based on prior art patents and printed publications. Specific claims, prior art, and statutory bases are not publicly known without the petition or denial decision.
• Institution decision: Denied. The PTAB issued a discretionary denial on February 20, 2026. A discretionary denial means the Board chose not to institute an IPR trial, often for reasons such as parallel litigation (under Fintiv factors), efficient administration of justice, or insufficient arguments. The specific reasoning for the denial in this case is not publicly available in the provided data.
• Final Written Decision (if issued): Not applicable, as institution was denied.
• Settlement / termination: Not applicable.
• Appeal: No appeal to the Federal Circuit regarding the discretionary denial has been publicly reported.
• Defensive value: The discretionary denial means the claims challenged in this specific IPR petition (IPR2025-01583) were not reviewed on the merits by the PTAB. This particular challenge did not result in any claims being invalidated. However, it doesn't necessarily harden the patent against all future IPRs, as the denial was discretionary and not on the merits of patentability. New grounds or different circumstances could still lead to institution in a different petition.

Strategic summary

As of today, May 24, 2026, the claims of US9651533 are in a dynamic state. No claims have been CANCELED or SUSTAINED by a Final Written Decision in an AIA trial. However, there is one active IPR proceeding, IPR2025-01250, where the PTAB has instituted a trial. This means the patentability of certain claims is under review, and they could potentially be invalidated in the future. The claims involved in IPR2025-01583 were UNTESTED on the merits due to a discretionary denial.

Regarding estoppel, since no Final Written Decision has been issued in any IPR, the statutory estoppel provisions of 35 U.S.C. § 315(e)(2) do not yet apply. For the petitioner in IPR2025-01583 (WHOOP, Inc.), while they are barred from bringing substantially the same petition again, the discretionary denial itself does not create a broad estoppel against other parties or against WHOOP, Inc. raising different grounds or challenges in other venues (like district court litigation). For SAMSUNG ELECTRONICS CO., LTD. et al. (petitioner in IPR2025-01250), estoppel will only apply if a Final Written Decision is issued. The prior-art grounds that are still available depend on what was challenged in each petition.

The presence of two IPR filings indicates that the patent is considered significant enough to warrant validity challenges by at least two different parties. One of the petitioners, Unified Patents, is a known defensive aggregator, which suggests strategic efforts to challenge the patent's validity. This pattern signals that the patent is likely being asserted or is considered a threat in the market, prompting these defensive actions.

Recommended next steps

For a defendant facing assertion of US9651533, it is critical to:

1. Monitor IPR2025-01250: Closely track the progress of IPR2025-01250, as the institution of trial means there is a significant chance that some claims could be found unpatentable. The Final Written Decision is due by May 20, 2027. Reviewing the institution decision document (once publicly available) would reveal which claims were challenged and on what grounds. This information can directly inform your defensive strategy.
2. Review the denial of IPR2025-01583: Obtain and analyze the PTAB's decision for IPR2025-01583 (Discretionary Denial, last modified 2026-02-20) to understand the specific reasons for the denial. This information is crucial, especially if the denial was due to Fintiv factors, as it might highlight ongoing parallel district court litigation that could impact your own defense.
3. Perform your own prior art search: Since no claims have been definitively upheld or invalidated on the merits, a thorough prior art search for invalidity contentions under 35 U.S.C. §§ 102 and 103 is still highly advisable. Any new and strong prior art could potentially form the basis of a new IPR petition if the existing proceedings do not fully address the patent's validity.
4. Evaluate claims cited: Determine which specific claims of US9651533 are being asserted against you. Cross-reference these with the claims challenged in IPR2025-01250 to assess the potential impact of its upcoming FWD on your specific case.