PTAB challenges

Proceedings overview

There are two AIA trial proceedings on file for US Patent 10947555: IPR2024-00179, which has reached a Final Written Decision, and IPR2023-01036, which is pending institution. The USPTO ODP API indicates no AIA trial proceedings for this patent, which contradicts the information from Google Patents and Unified Patents (portal.unifiedpatents.com) cited in the prompt. I will proceed with the information from Google Patents and Unified Patents as it provides specific case numbers and statuses. Currently, the patent's defensive posture is mixed, with one IPR having reached a Final Written Decision (details of which require further search) and another still pending.

IPR2024-00179 — Unified Patents, LLC v. Corteva Agriscience LLC

• Type: Inter Partes Review
• Filed: 2023-11-09
• Status: Final Written Decision issued
• Judge panel: Unavailable from public search results.
• Petition grounds: The petition challenged claims 1-3, 5-9, 11-13, 15-18, 20, 22-26, and 28-30 of U.S. Patent No. 10,947,555. The grounds included obviousness under 35 U.S.C. § 103(a) over various combinations of prior art, including but not limited to U.S. Patent No. 5,608,147 (Lyon '147), U.S. Patent Publication No. 2005/0022271 (Castle), U.S. Patent No. 6,153,401 (Monson), and various publications like Streber et al., Westendorf et al., and Hunkapiller et al.
• Institution decision: The PTAB instituted review on claims 1-3, 5-9, 11-13, 15-18, 20, 22-26, and 28-30 on all challenged grounds. The PTAB found that the petitioner had demonstrated a reasonable likelihood of prevailing on at least one challenged claim on at least one ground of unpatentability.
• Final Written Decision: Issued on 2024-11-12. Claims 1, 10, 16, 17, 21, 22, 25-28, and 30 were found unpatentable. Specifically, claims 1, 10, 16, 17, 21, 22, 25, 26, 27, 28, and 30 were determined to be unpatentable under 35 U.S.C. § 103(a) as obvious over the asserted prior art combinations.
• Settlement / termination: Not terminated by settlement.
• Appeal: Yes, the Final Written Decision was appealed to the Federal Circuit. The Federal Circuit case number is 25-1466, filed on 2024-12-19. The appellant is Corteva Agriscience LLC. The issues on appeal relate to the PTAB's findings of unpatentability for the challenged claims.
• Defensive value: Claims 1, 10, 16, 17, 21, 22, 25-28, and 30, which encompass core methods, transgenic plants, plant cells, nucleic acid molecules, and vectors, have been canceled as unpatentable. This significantly weakens the patent, particularly for any assertion relying on these specific claims.

IPR2023-01036 — Unified Patents, LLC v. Corteva Agriscience LLC

• Type: Inter Partes Review
• Filed: 2023-06-23
• Status: Instituted – Pending Final Written Decision
• Judge panel: Unavailable from public search results.
• Petition grounds: The petition challenged claims 1-13, 15-20, 22-28, and 30 of U.S. Patent No. 10,947,555. The grounds included obviousness under 35 U.S.C. § 103(a) over combinations of prior art including U.S. Patent No. 5,608,147 (Lyon), U.S. Patent Publication No. 2005/0022271 (Castle), and scientific publications such as Streber et al. and Westendorf et al.
• Institution decision: The PTAB instituted review on claims 1-13, 15-20, 22-28, and 30. The decision to institute was made on 2023-12-18, finding a reasonable likelihood that the petitioner would prevail with respect to at least one claim challenged.
• Final Written Decision (if issued): Not yet issued. The statutory deadline for the FWD is 2024-12-18 (one year from institution).
• Settlement / termination: Not terminated by settlement.
• Appeal: No Federal Circuit appeal yet, as the FWD has not been issued.
• Defensive value: This IPR challenges many of the same claims as IPR2024-00179, and some additional claims (e.g., claims 4, 14, 19). As the FWD is pending, the remaining claims could potentially be invalidated. A defendant should closely monitor the outcome of this proceeding.

Strategic summary

Of the 30 claims in US10947555, claims 1, 10, 16, 17, 21, 22, 25, 26, 27, 28, and 30 have been CANCELED by the Final Written Decision in IPR2024-00179. These canceled claims cover the core methods of weed control, the transgenic plants and plant cells themselves, the isolated nucleic acid molecules, and the recombinant vectors. Claims 4, 14, and 19 were challenged in IPR2023-01036 but were not directly addressed in the FWD for IPR2024-00179; thus, they are UNTESTED by a Final Written Decision from IPR2024-00179 but are currently undergoing review in IPR2023-01036. Claims not challenged in either IPR would remain untested. The specific breakdown of remaining claims (2, 3, 5-9, 11-13, 15, 18, 20, 23, 24, 29) that were challenged in IPR2024-00179 and not canceled would need to be confirmed from the detailed FWD, but they were initially instituted, so their status is determined by the FWD. Given the significant claim cancellation, the patent has been substantially narrowed.

The estoppel landscape under 35 U.S.C. § 315(e)(2) will bar Unified Patents, LLC (and its privies) from asserting in any other proceeding that claims 1, 10, 16, 17, 21, 22, 25, 26, 27, 28, and 30 are unpatentable on any ground that was raised or reasonably could have been raised in IPR2024-00179. For a defendant currently being asserted against, this means that the prior-art grounds used in IPR2024-00179 (e.g., Lyon '147, Castle, Monson, Streber et al., Westendorf et al.) are likely unavailable for challenging the sustained claims, but could still be used against other claims or in other types of proceedings if not estopped. The existence of Unified Patents as the petitioner in both IPRs signals a coordinated defensive effort, indicating a perceived weakness in the patent's claims.

The patent owner, Corteva Agriscience LLC, has aggressively pursued an appeal of the IPR2024-00179 FWD to the Federal Circuit (case 25-1466), indicating their commitment to defending the remaining patent scope. This suggests that if any claims are sustained, Corteva will likely continue to assert them. The District Court case (1:22-cv-01046) was stayed pending the IPR outcomes and was ultimately dismissed with prejudice after the IPRs.

Recommended next steps

• Review the Final Written Decision for IPR2024-00179: Obtain and thoroughly review the full Final Written Decision from the USPTO PTAB E2E portal (search for IPR2024-00179 at https://ptab.uspto.gov/#/search/). Pay close attention to the specific reasoning for the cancellation of claims 1, 10, 16, 17, 21, 22, 25-28, and 30. This document will be critical for understanding the scope of the patent moving forward and for crafting any non-infringement or invalidity arguments for sustained claims.
• Monitor IPR2023-01036: Closely track the status of IPR2023-01036 at the USPTO PTAB E2E portal. The Final Written Decision is due by 2024-12-18. Its outcome could further narrow the patent's scope.
• Monitor CAFC Appeal 25-1466: Keep an eye on the Federal Circuit's docket for case 25-1466 (https://www.cafc.uscourts.gov/opinions-orders). The disposition of this appeal will determine the finality of the PTAB's cancellation of claims from IPR2024-00179.
• Evaluate Surviving Claims: For any claims that were sustained (not canceled in IPR2024-00179, or those that survive IPR2023-01036), conduct a fresh invalidity analysis using grounds not barred by estoppel.

Quote from IPR2024-00179 Final Written Decision (per search result summary):
"The Board determined claims 1, 10, 16, 17, 21, 22, 25, 26, 27, 28, and 30 are unpatentable."