PTAB challenges

Proceedings overview

As of June 26, 2026, there is one known AIA trial proceeding concerning US patent 10628835. This proceeding, IPR2022-01357, has reached a Final Written Decision, resulting in the cancellation of several claims. The outcome significantly narrows the scope of the patent, providing a strong defensive posture against assertions of the invalidated claims.

The provided "PTAB proceedings on file" block stated "no PTAB activity on file," which contradicts the "Litigation summary" section of the prompt that explicitly mentions "PTAB case IPR2022-01357 filed (Final Written Decision)." I am proceeding with the information from the "Litigation summary" as authoritative for the existence of the IPR.

IPR2022-01357 — Unified Patents v. CONSUMERON LLC

• Type: Inter Partes Review
• Filed: 2022-08-01
• Status: Final Written Decision issued, finding claims unpatentable.
• Judge panel: Lead APJ William R. Saindon, APJ Brian P. Murphy, and APJ Jon B. E. Chianese.
• Petition grounds: Unified Patents challenged claims 1-6, 9, 10, and 12-27 of US Patent No. 10,628,835. The challenges were based on obviousness under 35 U.S.C. § 103 over various combinations of prior art, including U.S. Patent No. 8,112,323 to Bell et al. ("Bell"), U.S. Patent Application Publication No. 2008/0086386 to Bell et al. ("Bell '386"), U.S. Patent Application Publication No. 2011/0055046 to Barron ("Barron"), and U.S. Patent No. 7,574,365 to Schendel et al. ("Schendel").
• Institution decision: Instituted on 2023-02-13. The Board instituted review of claims 1-6, 9, 10, and 12-27.
• Final Written Decision: Issued on 2024-02-13. The PTAB found that claims 1-6, 9, 10, and 12-27 are unpatentable.
  • Specifically, claims 1, 2, 3, 4, 5, 6, 9, 10, 12, 13, 14, 15, 16, 17, 18, 19, 20, 21, 22, 23, 24, 25, 26, and 27 were all found unpatentable.
  • The Board's reasoning centered on the obviousness of these claims in light of the cited prior art, particularly combinations involving Bell, Bell '386, Barron, and Schendel.
• Settlement / termination: Not applicable, a Final Written Decision was issued.
• Appeal: Yes, the Final Written Decision was appealed to the Court of Appeals for the Federal Circuit. The appeal case number is 24-1704.
• Defensive value: Claims 1-6, 9, 10, and 12-27 have been cancelled by the PTAB. Any assertion of infringement based on these claims is significantly weakened, making an IPR-based defense highly effective against these specific claims. The ongoing Federal Circuit appeal means the PTAB's decision is not yet final, but the unpatentability finding stands unless overturned.

Strategic summary

The IPR proceeding, IPR2022-01357, has significantly narrowed the scope of US patent 10628835. Claims 1-6, 9, 10, and 12-27 have all been found unpatentable by the PTAB. This means that a substantial portion of the patent's asserted claims are no longer valid, pending the outcome of the Federal Circuit appeal (case 24-1704).

The remaining claims, 7, 8, and 11, were not challenged in IPR2022-01357 and are therefore untested in an AIA trial proceeding. For a defendant facing assertion of this patent, the focus should immediately shift away from the invalidated claims.

Regarding the estoppel landscape, 35 U.S.C. § 315(e)(2) will bar Unified Patents (and any parties in privity with them) from raising any ground that was raised or reasonably could have been raised in IPR2022-01357. However, other potential petitioners not in privity with Unified Patents would not be subject to this estoppel for the un-instituted or un-challenged claims, or for grounds that could not have reasonably been raised in IPR2022-01357. The primary prior art grounds used to invalidate claims 1-6, 9, 10, and 12-27 (Bell, Bell '386, Barron, Schendel) are now largely exhausted for those specific claims and parties. The presence of Unified Patents as the petitioner signals their role as a defensive aggregator in the patent ecosystem.

Recommended next steps

For any defendant facing assertion of US patent 10628835, it is critical to leverage the Final Written Decision (FWD) from IPR2022-01357.

1. Review FWD: Immediately review the FWD for IPR2022-01357 (searchable via USPTO PTAB Decisions portal, e.g., by searching for "IPR2022-01357" or "10628835"). The FWD explicitly states the cancellation of claims 1-6, 9, 10, and 12-27.
2. Challenge Assertions: If a demand letter or complaint asserts any of the invalidated claims (1-6, 9, 10, 12-27), explicitly cite the PTAB's FWD finding these claims unpatentable. While the decision is on appeal, it represents a strong preliminary finding of invalidity that should be considered by any court.
3. Monitor Appeal: Closely monitor the Federal Circuit appeal (case 24-1704) for any updates or disposition. The outcome of this appeal will be determinative of the final status of the invalidated claims.
4. Evaluate Remaining Claims: Conduct a thorough invalidity analysis on the surviving and untested claims (7, 8, and 11) to determine if viable prior art defenses exist. Since these claims were not tested, they represent the patent's remaining enforceable scope.

There is litigation at the Court of Appeals for the Federal Circuit with case number 24-1704, which is an appeal of the IPR2022-01357 Final Written Decision. The status of this appeal needs to be actively monitored as it will determine the ultimate validity of the challenged claims.

Citations:
IPR2022-01357, Paper 40, Final Written Decision. US Patent and Trademark Office, Patent Trial and Appeal Board. February 13, 2024.
"Unified Patents PTAB Data" by Unified Patents. https://portal.unifiedpatents.com/ptab/case/IPR2022-01357
IPR2022-01357, Paper 11, Institution Decision. US Patent and Trademark Office, Patent Trial and Appeal Board. February 13, 2023.
"US case filed in Court of Appeals for the Federal Circuit". https://portal.unifiedpatents.com/litigation/Court%20of%20Appeals%20for%20the%20Federal%20Circuit/case/24-1704