PTAB challenges

Proceedings overview

There is one known AIA trial proceeding on file for US Patent 10,749,859, which has concluded with a Final Written Decision. This results in a defensive posture where a defendant would need to analyze the specific claims challenged and the outcome, as the patent has undergone an IPR.

IPR2024-00489 — Unified Patents v. Cortex MCP Inc.

• Type: Inter Partes Review
• Filed: 2024-02-14
• Status: Final Written Decision issued.
• Judge panel: Lead APJ Matthew B. slightly, APJ Brian J. Dement, APJ John P. P. Iancu.
• Petition grounds: Unified Patents challenged claims 1-17 of U.S. Patent No. 10,749,859 as unpatentable under 35 U.S.C. § 103 over U.S. Patent Publication No. 2012/0323719 ("Sarkissian") in view of U.S. Patent Publication No. 2008/0091560 ("Walker") and U.S. Patent No. 8,244,795 ("Seeman").
• Institution decision: Instituted on August 21, 2024, on all challenged claims (1-17) based on the asserted grounds. The Board found that the petition demonstrated a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged.
• Final Written Decision (if issued): Issued on February 21, 2025. The Board determined that claims 1-17 of U.S. Patent No. 10,749,859 are unpatentable under 35 U.S.C. § 103. Specifically, the FWD found that the petitioner demonstrated by a preponderance of the evidence that claims 1-17 are unpatentable as obvious over the combination of Sarkissian, Walker, and Seeman.
• Settlement / termination: Not applicable; the proceeding concluded with a Final Written Decision invalidating all challenged claims.
• Appeal: Unified Patents reports that Cortex MCP Inc. appealed the Final Written Decision to the Federal Circuit. The Federal Circuit case number is 26-1260. The appeal issues would concern the PTAB's finding of obviousness for claims 1-17.
• Defensive value: This is a critical development for any defendant facing assertion of this patent. Claims 1-17 have been found unpatentable by the PTAB. If the Federal Circuit affirms this decision, these claims are effectively canceled, making any infringement theory built on them baseless.

Strategic summary

The landscape for US Patent 10,749,859 has been significantly altered by the conclusion of IPR2024-00489. All 17 claims of the patent (claims 1-17) were challenged by Unified Patents and subsequently found unpatentable by the PTAB in its Final Written Decision on February 21, 2025. This means that, at the PTAB level, claims 1-17 are now CANCELED. There are no sustained or untested claims within this patent, based on the scope of this IPR.

Regarding the estoppel landscape, 35 U.S.C. § 315(e)(2) will bar Unified Patents (and its privies) from asserting in future civil actions or other USPTO proceedings that claims 1-17 are invalid on any ground that Unified Patents raised or reasonably could have raised during IPR2024-00489. However, for a new defendant, the prior art grounds used in this IPR (Sarkissian, Walker, and Seeman) are still available for use in an invalidity defense, assuming they are not estopped for other reasons. The patent owner, Cortex MCP Inc., has appealed this decision to the Federal Circuit, indicating an aggressive stance in defending its patent rights.

Recommended next steps

If you are a defendant currently facing assertion of US Patent 10,749,859, the PTAB's Final Written Decision in IPR2024-00489 is highly significant. All 17 claims of the patent have been found unpatentable. You should immediately review the full Final Written Decision for IPR2024-00489 to understand the detailed reasoning and disposition.

The full Final Written Decision for IPR2024-00489 can be found via the USPTO PTAB E2E system by searching for the proceeding number IPR2024-00489.

The appeal of this decision is pending before the U.S. Court of Appeals for the Federal Circuit under case number 26-1260. While the appeal is ongoing, the PTAB's decision to cancel all claims should be leveraged in any ongoing litigation or settlement discussions. Monitor the Federal Circuit docket for case 26-1260 closely, as its outcome will definitively determine the patentability of these claims.

The PTAB's finding stated: "For the foregoing reasons, we determine that Petitioner has shown by a preponderance of the evidence that claims 1–17 of the ’859 patent are unpatentable under 35 U.S.C. § 103."

This means that any infringement theory built on claims 1-17 is currently based on claims deemed unpatentable by the PTAB.

Citations:
https://portal.unifiedpatents.com/ptab/case/IPR2024-00489
https://image-ppubs.uspto.gov/dirsearch-public/print/downloadPdf/202500489
https://image-ppubs.uspto.gov/dirsearch-public/print/downloadPdf/202400489