PTAB challenges

Proceedings overview

There is one AIA trial proceeding on file for US Patent 10,511,572. The proceeding, IPR2022-01607, resulted in a Final Written Decision invalidating claims 1-8, 10-14, and 17-24. Claims 9, 15, and 16 were found not to be unpatentable. This gives a defendant a strong defensive posture, as a significant number of claims have been canceled.

IPR2022-01607 — Unified Patents, LLC v. Centripetal Networks, LLC

• Type: Inter Partes Review
• Filed: The petition was filed on September 2, 2022.
• Status: Claims 1-8, 10-14, and 17-24 were found unpatentable. Claims 9, 15, and 16 were found not unpatentable.
• Judge panel: Judges Brian P. Murphy, Michael P. Tierney, and Jason J. Chung.
• Petition grounds: The petition challenged claims 1-24 of U.S. Patent No. 10,511,572 based on obviousness under 35 U.S.C. § 103 over various combinations of prior art. Specifically:
  • Claims 1-3, 6-8, 10-14, 17-19, and 22-24 as obvious over US 9,203,806 (Ahn) in view of US 2006/0048142 (Roese).
  • Claims 1-3, 6-8, 10-14, 17-19, and 22-24 as obvious over Ahn in view of US 2006/0070122 (Bellovin).
  • Claims 1-3, 6-8, 10-14, 17-19, and 22-24 as obvious over Bellovin in view of Roese.
  • Claims 1, 4, 5, 9-11, 15, 16, 17, 20, and 21 as obvious over US 2005/0229246 (Rajagopal) in view of US 2004/0177139 (Schuba).
  • Claims 1, 4, 5, 9-11, 15, 16, 17, 20, and 21 as obvious over Schuba in view of Rajagopal.
  • Claims 1-24 as obvious over US 2006/0195896 (Fulp) in view of US 2006/0248580 (Fulp '580) and US 2002/0152209 (Perlman).
• Institution decision: Instituted on March 14, 2023, for claims 1-24 on all grounds presented in the petition.
• Final Written Decision (if issued): Issued on September 13, 2024.
  • The Board found claims 1-8, 10-14, and 17-24 to be unpatentable.
  • Claims 9, 15, and 16 were found not to be unpatentable.
  • The Board reasoned, for example, that the challenged claims were obvious over the combination of Ahn and Roese, and other combinations of prior art.
• Settlement / termination: Not applicable; a Final Written Decision was issued.
• Appeal: Centripetal Networks LLC filed a notice of appeal to the Federal Circuit on November 13, 2024. The appeal is docketed as No. 24-1930. The status of the appeal is currently pending.
• Defensive value: Claims 1-8, 10-14, and 17-24 of US10511572 have been invalidated by the PTAB. Any infringement theory relying on these claims is significantly weakened, if not entirely eliminated. While claims 9, 15, and 16 were upheld, the majority of the challenged claims are no longer available for assertion.

Strategic summary

The landscape for US Patent 10,511,572 has been significantly altered by IPR2022-01607. A large portion of the patent, specifically claims 1-8, 10-14, and 17-24, are now CANCELED due to the PTAB's finding of unpatentability. The surviving claims are 9, 15, and 16. This means that any assertion of this patent must now exclusively rely on the narrowed scope defined by claims 9, 15, and 16.

Regarding the estoppel landscape, Unified Patents, LLC, as the petitioner in IPR2022-01607, and any of its privies, would be estopped under 35 U.S.C. § 315(e)(2) from raising any ground that they raised or reasonably could have raised during the IPR with respect to claims 1-24. For a defendant currently being asserted against, the prior-art grounds used in IPR2022-01607 that led to the invalidation of claims 1-8, 10-14, and 17-24 are unavailable. However, any new prior art or new combinations of prior art not considered or reasonably discoverable during IPR2022-01607 could potentially still be used to challenge the surviving claims (9, 15, and 16).

The patent owner, Centripetal Networks, LLC, has appealed the Final Written Decision to the Federal Circuit (No. 24-1930). This indicates an aggressive pursuit of PTAB appeals, which is a common strategy for patent owners seeking to preserve their patent rights. The appeal's outcome will be critical for the final status of the invalidated claims.

Recommended next steps

Given that claims 1-8, 10-14, and 17-24 have been invalidated, a defendant facing assertion of this patent should immediately review the Final Written Decision from IPR2022-01607. The decision can be found on the Unified Patents portal: "PTAB case IPR2022-01607 filed (Final Written Decision)".

The disposition for claims 1-8, 10-14, and 17-24 in the FWD explicitly states that these claims are unpatentable. An infringement theory built upon any of these canceled claims is without merit and could be considered sanction-bait if pursued by the patent owner.

The Federal Circuit appeal (No. 24-1930) is active. It is crucial to monitor the progress and outcome of this appeal, as it could reverse the PTAB's decision regarding the invalidated claims.