PTAB challenges

Proceedings overview

Only one AIA trial proceeding, IPR2025-01052, has been filed against US patent 9905691. This proceeding was terminated due to settlement, meaning no claims were ultimately invalidated or sustained by the PTAB. This status provides a defendant with a neutral defensive posture as the patent's claims have not been challenged to a final decision at the PTAB.

IPR2025-01052 — GLOBALFOUNDRIES Inc. et al. v. Oak Ip LLC

• Type: Inter Partes Review
• Filed: 2025-06-02
• Status: Terminated-Settled. This proceeding concluded before a final decision on the merits, indicating the parties reached a private agreement.
• Judge panel: Information regarding the specific Administrative Patent Judges for this proceeding is not publicly available without deeper access to the PTAB E2E system.
• Petition grounds: Details regarding the specific claims challenged and prior art cited in the petition for IPR2025-01052 are not publicly detailed for terminated-settled cases without accessing the full petition, which is typically confidential. However, IPRs are typically based on § 102 (novelty) and § 103 (obviousness) grounds.
• Institution decision: The proceeding was settled before a decision on institution was reached or made public, as indicated by the "Terminated-Settled" status and the final modification date of 2025-12-11.
• Final Written Decision (if issued): No Final Written Decision was issued as the proceeding was terminated due to settlement.
• Settlement / termination: The proceeding was terminated as "Settlement" on 2025-12-11. The specific terms of the settlement are typically confidential between the parties.
• Appeal: No appeal to the Federal Circuit occurred as no Final Written Decision was issued.
• Defensive value: As this IPR concluded via settlement, the patent claims were not adjudicated as unpatentable or patentable by the PTAB. This means that an IPR-based defense using the same prior art grounds would likely still be available for a different defendant, as no estoppel would apply from this settlement for non-parties.

Strategic summary

US patent 9905691 has faced one IPR proceeding, IPR2025-01052, which was filed by GLOBALFOUNDRIES Inc. et al. This proceeding did not result in any claims being canceled or sustained by the PTAB, as it was terminated due to a settlement between the petitioner and the patent owner, Oak IP LLC. Therefore, all claims of US9905691 remain untested by the PTAB in terms of patentability challenges through a Final Written Decision.

The estoppel landscape for US9905691 is currently minimal. Since IPR2025-01052 was terminated via settlement, no statutory estoppel under 35 U.S.C. § 315(e)(2) for grounds raised or reasonably could have been raised would apply to parties not privy to that settlement. This means that a new defendant facing assertion of this patent would theoretically have a full range of prior-art grounds available for a potential new IPR, even if some of those grounds were implicitly part of the settled IPR.

There isn't a clear pattern signal yet from a single settled IPR. While the involvement of GLOBALFOUNDRIES Inc. suggests the patent was being asserted against significant players, the settlement prevents drawing conclusions about the patent's resilience to PTAB challenges or the patent owner's (Oak IP LLC) litigation strategy regarding appeals.

Recommended next steps

For a defendant currently facing assertion of US patent 9905691:

• Given the "Terminated-Settled" status of IPR2025-01052, there is no PTAB Final Written Decision to cite for claim invalidation. All claims of US9905691 remain presumptively valid.
• The absence of an active PTAB proceeding means there are no ongoing trial-stage milestones to track.
• Consider evaluating the claims and potential prior art independently to determine the viability of initiating a new IPR. The fact that an IPR was filed (even if settled) suggests at least one party found grounds for challenge. The settlement terms are confidential, but it does not prevent a new party from challenging the patent.
• Review the full file history for IPR2025-01052 on the USPTO PTAB E2E portal (https://portal.unifiedpatents.com/ptab/case/IPR2025-01052) to understand the petition's scope (if publicly available) and any pre-institution arguments, which may offer insights despite the lack of a final decision.