Untitled case

The case IPR2023-01126 involves Unified Patents LLC as the Petitioner before the Patent Trial and Appeal Board (PTAB). Unified Patents is a member-based organization that aims to deter abusive patent assertions by Non-Practicing Entities (NPEs) and improve patent quality by challenging patents through post-grant review proceedings such as Inter Partes Reviews (IPRs). Their involvement often signals that the challenged patent is owned by an NPE or is being asserted by one against operating companies, though the specific patent owner for 11208029 and any related infringement litigation has not been definitively identified in the provided search results.

The patent at issue is U.S. Patent No. 11,208,029, titled "Automated Test System and Method for Testing Applications". A technical sketch reveals the patent generally describes an automated system and method for testing software applications. The procedural posture for this case is an Inter Partes Review at the Patent Trial and Appeal Board. The status of IPR2023-01126 is "Not Instituted - Procedural," which means the PTAB declined to initiate a full review of the patent's validity due to a formal defect or issue with the petition itself, rather than a substantive decision on the merits of the unpatentability arguments.

The case is notable primarily due to Unified Patents' role as a frequent challenger of asserted patents, particularly those held by NPEs. The "Not Instituted - Procedural" status is significant as it indicates a failure to meet specific procedural requirements in the petition, preventing a full examination of the patent's validity. While many IPRs are denied on discretionary grounds (e.g., due to parallel litigation in district courts under Fintiv factors) or on the merits, a procedural denial points to an issue with the petition's form or compliance. As no underlying district court litigation specifically involving patent 11,208,029 has been found in the provided search results, the exact accused product or technology that prompted Unified Patents' challenge remains unclear.

The IPR2023-01126 case, involving Unified Patents LLC as the Petitioner and U.S. Patent No. 11,208,029, was not instituted due to procedural reasons. Beyond this "Not Instituted - Procedural" status, public search results do not detail specific legal developments within this particular IPR. This type of procedural denial indicates a formal defect or issue with the petition itself, rather than a substantive decision on the merits of the unpatentability arguments.

While the exact nature of the procedural issue for IPR2023-01126 is not specified in the available information, other IPRs filed by Unified Patents have been terminated for various reasons, including joint motions to terminate by the parties, often due to settlement or reallocation of resources. For instance, IPR2023-00584, another case with Unified Patents as petitioner, was terminated prior to institution based on a joint motion by the parties, where Unified Patents stated it sought to reallocate resources due to budget constraints.

The Patent Owner for U.S. Patent No. 11,208,029 in IPR2023-01126 is not explicitly identified in the provided search results. However, a different IPR, IPR2022-01498, also involving Unified Patents LLC and U.S. Patent No. 11,208,029, lists Torchlight Technologies LLC as the Patent Owner and indicates a "Settlement" as the termination reason, dated September 6, 2023. This suggests that Torchlight Technologies LLC may be the owner of the patent at issue in IPR2023-01126 as well, and that some form of resolution outside of a full IPR trial has occurred for challenges related to this patent.

There is no information available from the search results regarding parallel district court litigation specifically involving U.S. Patent No. 11,208,029 that would have affected the outcome of IPR2023-01126. While the PTAB often considers parallel litigation when deciding whether to institute an IPR, particularly under the Fintiv factors, the "Not Instituted - Procedural" status suggests the denial was based on a defect in the petition itself rather than discretionary factors related to ongoing litigation. Without institution, there would be no claim construction, discovery milestones, trial events, or post-trial motions to report for this IPR proceeding.

Specific counsel of record representing Unified Patents LLC in IPR2023-01126 could not be definitively identified through public search of PTAB dockets or related legal news. PTAB cases typically list attorneys on the initial petition and subsequent filings, but this information for the specific IPR2023-01126 was not readily available in the search results.

However, based on Unified Patents LLC's frequent activity in Inter Partes Review (IPR) proceedings, they commonly utilize both their in-house legal team and various outside law firms.

Generally, individuals who have represented Unified Patents LLC in IPRs and related appeals include:

• Roshan Mansinghani

  • Role: In-house counsel (Head of Operations, Senior Patent Counsel)
  • Firm: Unified Patents, LLC, Chevy Chase, MD
  • Note: Mansinghani is a key in-house attorney for Unified Patents, involved in numerous IPR proceedings.

• Jonathan Stroud

  • Role: In-house counsel (COO & CLO)
  • Firm: Unified Patents, LLC
  • Note: Stroud is a prominent in-house attorney and Chief Legal Officer for Unified Patents, often involved in their strategic IPR efforts.

• Jordan Michael Rossen

  • Role: In-house counsel (Senior Patent Counsel)
  • Firm: Unified Patents, LLC, Chevy Chase, MD
  • Note: Rossen is listed as an attorney representing Unified Patents in IPR-related appeals.

Unified Patents also frequently engages outside counsel for its IPR filings and subsequent appeals. Firms that have represented Unified Patents in other IPR cases include:

• Haynes and Boone, LLP

  • Role: Outside Counsel (e.g., Adam Lloyd Erickson)
  • Office Location: Washington, DC (for Adam Lloyd Erickson)
  • Note: Adam Lloyd Erickson of Haynes and Boone, LLP, has argued for Unified Patents in Federal Circuit appeals stemming from IPRs.

• Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

  • Role: Outside Counsel (e.g., Peter Ayers for appeals)
  • Note: Finnegan has represented Unified Patents in past IPR proceedings and appeals.

It is important to reiterate that while these individuals and firms frequently represent Unified Patents in IPR matters, their specific involvement in IPR2023-01126 could not be confirmed without direct access to the PTAB docket for that specific case.

I am unable to identify the counsel of record representing the Patent Owner (defendant in the context of an IPR) in IPR2023-01126.

Despite targeted searches for the Patent Owner of U.S. Patent No. 11,208,029 and counsel associated with IPR2023-01126, the available public web search results, including those referencing PTAB databases, do not directly disclose this information. The status of the IPR as "Not Instituted - Procedural" suggests that the proceedings did not advance to a full review, which may limit the public availability of detailed filings, including the full legal team for the Patent Owner.