PTAB challenges

Proceedings overview

A single AIA trial proceeding has been filed against US patent 9772193. This proceeding, IPR2026-00156, was denied institution on discretionary grounds. This outcome means the patent claims challenged in that IPR remain untested on their merits by the PTAB, providing a hardened defensive posture for the patent owner against future IPRs on the same grounds.

IPR2026-00156 — Google LLC v. Gamba Group Holdings LLC

• Type: Inter Partes Review
• Filed: 2025-12-31
• Status: Discretionary Denial (Institution Denied)
• Judge panel: The decision on institution for IPRs after March 26, 2025, involves a bifurcated process where the Director, with at least three PTAB judges, determines whether a petition should be discretionarily denied. Only if discretion is not exercised is it referred to a three-member panel for merits-based considerations. The specific panel members for this discretionary denial are not explicitly named in the available public search results, other than indicating it was a "Decision" from "BEFORE THE OFFICE OF THE UNDER SECRETARY OF COMMERCE FOR INTELLECTUAL PROPERTY AND DIRECTOR OF THE UNITED STATES PATENT AND TRADEMARK OFFICE".
• Petition grounds: Google LLC challenged claims 12, 13, and 15-18 under 35 U.S.C. §102 for anticipation by U.S. Patent Application Publication No. 2002/0082025 (Baese) and U.S. Patent Application Publication No. 2003/0055560 (Phillips). The petitioner argued that the challenged claims, which involve GPS, contradict the patent's specification that repeatedly disparages GPS.
• Institution decision: Institution was denied on 2026-05-06. The decision was a "discretionary denial," meaning the Board did not reach the merits of the patentability challenge. The exact reasoning for the discretionary denial specific to IPR2026-00156 is not detailed in the provided search results. However, recent USPTO policy changes regarding discretionary denials, such as considerations for U.S. manufacturing footprint, Real Party in Interest (RPI) issues involving foreign governments, "settled expectations" for older patents, and parallel litigation (Fintiv factors), have led to an increased rate of such denials. The PTAB's institution rate has significantly decreased in fiscal year 2026, with 64% of petitions fully denied based on discretionary considerations.
• Final Written Decision: Not applicable, as institution was denied.
• Settlement / termination: Not applicable, as institution was denied.
• Appeal: Not applicable, as institution was denied and such denials are generally unreviewable by the Federal Circuit if they are closely tied to the institution decision.
• Defensive value: The discretionary denial means that claims 12, 13, and 15-18 of US9772193 remain unchallenged on their merits by this IPR. A defendant facing assertion of these claims will need to consider alternative invalidity strategies beyond an IPR based on the same prior art and grounds, as re-filing a similar petition would likely face the same discretionary hurdles or be barred.

Strategic summary

Currently, no claims of US9772193 have been canceled or sustained by the PTAB. Claims 12, 13, and 15-18 were challenged in IPR2026-00156, but institution was denied on discretionary grounds. Therefore, these claims, along with all other claims of the patent, remain untested by the PTAB. The patent has not been narrowed through IPR.

Regarding the estoppel landscape, Google LLC (and its privies) would be estopped under 35 U.S.C. § 315(e)(2) from asserting in future district court litigation or ITC proceedings that claims 12, 13, and 15-18 are unpatentable on any ground that it raised or reasonably could have raised in IPR2026-00156. This means the prior art references Baese (US 2002/0082025) and Phillips (US 2003/0055560) under § 102 are likely unavailable for Google LLC in future proceedings against these specific claims. Other defendants not in privity with Google LLC, however, would not be subject to this estoppel and could potentially raise these, or other, prior art grounds in a new IPR or district court litigation.

The discretionary denial in IPR2026-00156 reflects a recent trend at the PTAB, particularly in late 2025 and early 2026, towards increased discretionary denials driven by new policies from USPTO Director John Squires. These policies consider factors beyond the merits of the prior art, such as U.S. manufacturing footprint, RPI issues, "settled expectations," and parallel litigation, making IPR institution more challenging for petitioners. The fact that Google LLC, a major tech company, was denied institution suggests a broad application of these discretionary denial policies.

Recommended next steps

Since IPR2026-00156 was denied institution on discretionary grounds, there is no Final Written Decision to link to that addresses the merits of the challenged claims. The claims (12, 13, and 15-18) remain patentable as far as the PTAB is concerned.

For a defendant currently being asserted against:

• Evaluate the basis for discretionary denial: While the specific reasoning for IPR2026-00156 is not publicly detailed in the search results, understanding the current PTAB discretionary denial landscape (e.g., U.S. manufacturing, RPI, Fintiv factors, settled expectations) is crucial before considering a new IPR filing. The denial may indicate that the PTAB is disfavoring petitions against patents like US9772193 due to policy considerations.
• Consider alternative invalidity strategies: Given the discretionary denial, an IPR using the same grounds and prior art against claims 12, 13, and 15-18 would likely face similar hurdles. Defendants should explore other invalidity arguments (e.g., different prior art, different statutory bases like § 112, or even the same prior art against different claims) or consider district court invalidity defenses.
• Analyze the estoppel: Google LLC and its privies are estopped from asserting the raised grounds against the challenged claims. This does not necessarily apply to other potential defendants, who may still pursue IPRs on the same grounds if they are not in privity with Google LLC. However, the precedent of a discretionary denial might still influence the PTAB's decision on similar petitions.