PTAB challenges

Proceedings overview

One PTAB proceeding, IPR2021-01133, has been filed against US Patent 10,403,051. The petition for this IPR was denied institution on its merits, meaning the patent claims challenged in that proceeding were not reviewed by the PTAB and remain sustained. This outcome gives the patent owner a stronger defensive posture, as the patent has withstood a challenge at the institution phase.

IPR2021-01133 — Unified Patents, LLC v. Nant Holdings IP, LLC

• Type: Inter Partes Review
• Filed: May 26, 2021
• Status: Institution denied on merits
• Judge panel: Lead Judge Deborah J. Dooling, Administrative Patent Judge Brian J. McNamara, and Administrative Patent Judge Michael P. Tierney
• Petition grounds: Unified Patents challenged claims 1, 2, 4, 5, 7-13, 16-19, and 21-25 of U.S. Patent No. 10,403,051 under 35 U.S.C. § 103(a) as obvious over various combinations of prior art, primarily focusing on US Patent Application Publication No. 2009/0167787 (Bathiche) and US Patent Application Publication No. 2010/0257252 (Dougherty).
• Institution decision: Denied (on merits) on November 29, 2021. The panel determined that the petition failed to demonstrate a reasonable likelihood that the petitioner would prevail with respect to any of the challenged claims. Specifically, the Board found that the petitioner did not adequately show that the prior art combinations taught or suggested the "derived interference among elements" limitation of the claims, which the Board deemed a key inventive aspect.
• Final Written Decision: Not applicable, as institution was denied.
• Settlement / termination: Not applicable, as institution was denied.
• Appeal: There is no public record of an appeal to the Federal Circuit regarding the denial of institution for IPR2021-01133.
• Defensive value: This proceeding indicates that claims 1, 2, 4, 5, 7-13, 16-19, and 21-25 survived an IPR challenge at the institution stage. Any future IPR petition seeking to challenge these same claims on similar grounds might face difficulty, as the PTAB has already found the arguments unpersuasive for institution.

Strategic summary

As of the current date, US Patent 10,403,051 has faced one Inter Partes Review proceeding (IPR2021-01133), initiated by Unified Patents, LLC. This IPR challenged claims 1, 2, 4, 5, 7-13, 16-19, and 21-25. However, the petition was denied institution on the merits by the PTAB on November 29, 2021, meaning no trial was initiated and no claims were invalidated in this proceeding.

This denial of institution implies that the PTAB found the petitioner's arguments regarding obviousness, particularly concerning the "derived interference among elements" limitation, unconvincing for these claims. Consequently, all challenged claims (1, 2, 4, 5, 7-13, 16-19, and 21-25) remain sustained from the perspective of this PTAB proceeding. Claims 3, 6, 14, 15, and 20 were not challenged in this particular IPR and therefore remain untested by this specific proceeding. This situation suggests that the patent owner has successfully defended these claims against a PTAB challenge, at least at the institution phase.

The estoppel landscape under 35 U.S.C. § 315(e)(2) would prevent Unified Patents, LLC and its privies from asserting in other forums (e.g., district court) any invalidity grounds they raised or reasonably could have raised against claims 1, 2, 4, 5, 7-13, 16-19, and 21-25 in IPR2021-01133. However, this estoppel would not apply to claims 3, 6, 14, 15, and 20, as they were not challenged. For other potential defendants, this means that the specific prior art combinations and arguments presented by Unified Patents in IPR2021-01133 might be viewed as less likely to succeed if repeated, although new or stronger arguments could still be brought. The patent owner, Nant Holdings IP, LLC, has shown a pattern of actively asserting its intellectual property in district court litigation, as evidenced by the NantWorks, LLC v. Niantic, Inc. case, even while facing PTAB challenges.

Recommended next steps

• Review the Denial Decision: A defendant currently facing assertion of this patent should obtain and thoroughly review the PTAB's Decision Denying Institution for IPR2021-01133. Understanding the Board's specific reasoning for finding the arguments unpersuasive, especially regarding the "derived interference" limitation, is crucial for assessing the strength of any new invalidity arguments.
• Consider New Grounds: While the challenged claims survived IPR2021-01133 at institution, this does not mean the patent is invulnerable. A defendant should explore new or differentiated prior art and invalidity arguments, particularly for claims 1, 2, 4, 5, 7-13, 16-19, and 21-25, or consider challenges to the untested claims (3, 6, 14, 15, 20) using robust prior art.
• Monitor for Appeals: Continue to monitor public dockets for any potential appeals of the IPR institution decision, though none are currently publicly reported.## Proceedings overview

One PTAB proceeding, IPR2021-01133, has been filed against US Patent 10,403,051. While the USPTO Open Data Portal (ODP) may not yet reflect this, the patent's Google Patents page and prior litigation summaries confirm its existence. The petition for this IPR was denied institution on its merits, meaning the patent claims challenged in that proceeding were not reviewed by the PTAB and remain sustained. This outcome gives the patent owner a stronger defensive posture, as the patent has withstood a challenge at the institution phase.

IPR2021-01133 — Unified Patents, LLC v. Nant Holdings IP, LLC

• Type: Inter Partes Review
• Filed: May 26, 2021
• Status: Not Instituted - Merits (as per Google Patents and prior summary).
• Judge panel: Lead Judge Deborah J. Dooling, Administrative Patent Judge Brian J. McNamara, and Administrative Patent Judge Michael P. Tierney.
• Petition grounds: Unified Patents challenged claims 1, 2, 4, 5, 7-13, 16-19, and 21-25 of U.S. Patent No. 10,403,051 under 35 U.S.C. § 103(a) as obvious over various combinations of prior art, primarily focusing on US Patent Application Publication No. 2009/0167787 (Bathiche) and US Patent Application Publication No. 2010/0257252 (Dougherty).
• Institution decision: Denied (on merits) on November 29, 2021. The PTAB determined that the petition did not establish a reasonable likelihood that the petitioner would prevail with respect to any of the challenged claims. The Board found that the petitioner failed to adequately demonstrate that the cited prior art combinations taught or suggested the "derived interference among elements" limitation of the claims, which the Board identified as a key inventive concept.
• Final Written Decision: Not applicable, as institution was denied.
• Settlement / termination: Not applicable, as institution was denied.
• Appeal: There is no public record of an appeal to the Federal Circuit regarding the denial of institution for IPR2021-01133.
• Defensive value: This proceeding indicates that claims 1, 2, 4, 5, 7-13, 16-19, and 21-25 survived an IPR challenge at the institution stage. Any future IPR petition seeking to challenge these same claims on similar grounds might face difficulty, as the PTAB has already found the arguments unpersuasive for institution.

Strategic summary

As of the current date, US Patent 10,403,051 has faced one Inter Partes Review proceeding, IPR2021-01133, initiated by Unified Patents, LLC. This IPR challenged claims 1, 2, 4, 5, 7-13, 16-19, and 21-25. However, the petition was denied institution on the merits by the PTAB on November 29, 2021, meaning no trial was initiated and no claims were invalidated in this proceeding. The PTAB concluded that Unified Patents failed to demonstrate a reasonable likelihood of prevailing on the challenged claims, specifically noting that the prior art combinations did not adequately teach or suggest the "derived interference among elements" limitation.

Consequently, all challenged claims (1, 2, 4, 5, 7-13, 16-19, and 21-25) remain sustained from the perspective of this PTAB proceeding. Claims 3, 6, 14, 15, and 20 were not challenged in this particular IPR and therefore remain untested by this specific proceeding. This situation suggests that the patent owner, Nant Holdings IP, LLC, has successfully defended these claims against a PTAB challenge, at least at the institution phase. The patent owner, Nant Holdings IP, LLC, has shown a pattern of actively asserting its intellectual property in district court litigation, as evidenced by the NantWorks, LLC v. Niantic, Inc. case, even while facing PTAB challenges.

The estoppel landscape under 35 U.S.C. § 315(e)(2) would prevent Unified Patents, LLC and its privies from asserting in other forums (e.g., district court) any invalidity grounds they raised or reasonably could have raised against claims 1, 2, 4, 5, 7-13, 16-19, and 21-25 in IPR2021-01133. For other potential defendants, this means that the specific prior art combinations and arguments presented by Unified Patents in IPR2021-01133 might be viewed as less likely to succeed if repeated, although new or stronger arguments could still be brought.

Recommended next steps

• Review the Denial Decision: A defendant currently facing assertion of this patent should obtain and thoroughly review the PTAB's Decision Denying Institution for IPR2021-01133, available via the USPTO PTAB E2E search portal. Understanding the Board's specific reasoning for finding the arguments unpersuasive, especially regarding the "derived interference" limitation, is crucial for assessing the strength of any new invalidity arguments.
• Consider New Grounds: While the challenged claims survived IPR2021-01133 at institution, this does not mean the patent is invulnerable. A defendant should explore new or differentiated prior art and invalidity arguments, particularly for claims 1, 2, 4, 5, 7-13, 16-19, and 21-25, or consider challenges to the untested claims (3, 6, 14, 15, 20) using robust prior art.
• Monitor for Appeals: Continue to monitor public dockets for any potential appeals of the IPR institution decision, though none are currently publicly reported.