PTAB challenges

Proceedings overview

There are two AIA trial proceedings on file for US patent 11017020. One Post-Grant Review (PGR) resulted in all challenged claims (1-20) being invalidated, while one Inter Partes Review (IPR) was denied institution. This gives a defendant a very strong defensive posture, as all claims of the patent have been canceled.

PGR2022-00006 — Unified Patents, LLC v. MemoryWeb LLC

• Type: Post-Grant Review
• Filed: 2021-10-18
• Status: Final Written Decision. All challenged claims were found unpatentable.
• Judge panel: Michael P. Safford, Kevin W. Cherry, Michael W. Kim
• Petition grounds:
  • Claims 1-20 as unpatentable under 35 U.S.C. § 101 as directed to abstract ideas.
  • Claims 1-20 as unpatentable under 35 U.S.C. § 103 over Desmond et al. (US 2013/0073570 A1) in view of conventional computer components.
• Institution decision: Instituted on 2022-04-18. The Board instituted review of claims 1-20 under both § 101 and § 103 grounds.
• Final Written Decision (if issued): Issued on 2023-04-18. The Board determined that Petitioner had shown by a preponderance of the evidence that claims 1-20 are unpatentable under 35 U.S.C. § 101 and under 35 U.S.C. § 103. All claims 1-20 were found unpatentable.
• Settlement / termination: The proceeding concluded with a Final Written Decision invalidating all claims; there was no settlement.
• Appeal: The Unified Patents record indicates no appeal was filed.
• Defensive value: All claims (1-20) of US11017020 have been canceled by the PTAB. Any infringement theory built on these claims is moot.

IPR2022-00111 — Unified Patents, LLC v. MemoryWeb LLC

• Type: Inter Partes Review
• Filed: 2021-11-04
• Status: Not Instituted - Merits. The Board denied institution of the IPR petition.
• Judge panel: Trenton W. Ward, Michael P. Safford, Joni Y. Luis
• Petition grounds:
  • Claims 1-20 as unpatentable under 35 U.S.C. § 103 over US 2013/0073570 A1 (Desmond) in view of U.S. Pat. No. 8,112,423 B2 (Kwan).
  • Claims 1-20 as unpatentable under 35 U.S.C. § 103 over Desmond in view of U.S. Pat. No. 7,454,402 B2 (Stirling).
• Institution decision: Denied institution on 2022-05-11. The Board determined that the Petitioner had not demonstrated a reasonable likelihood of prevailing with respect to any of the challenged claims for the proposed grounds.
• Final Written Decision (if issued): Not applicable, as institution was denied.
• Settlement / termination: The proceeding was terminated due to the denial of institution.
• Appeal: The Unified Patents record indicates no appeal was filed.
• Defensive value: Institution was denied, meaning the claims were not thoroughly tested by this specific petition. However, the subsequent PGR proceeding (PGR2022-00006) ultimately invalidated all claims.

Strategic summary

All claims (1-20) of US patent 11017020 are now CANCELED as a result of the Final Written Decision in PGR2022-00006. There are no surviving claims from the original patent as all challenged claims were invalidated.

Regarding the estoppel landscape, Unified Patents, LLC (and its privies) would be estopped under 35 U.S.C. § 315(e)(2) from asserting in other proceedings that claims 1-20 are unpatentable on any ground that Unified Patents, LLC raised or reasonably could have raised in PGR2022-00006. However, given that all claims have been cancelled, this estoppel is largely academic for this patent. For a defendant currently being asserted against, the PTAB's decision provides a definitive ruling that claims 1-20 are unpatentable.

A pattern signal here is that Unified Patents, a defensive aggregator, was the petitioner in both proceedings. This indicates a coordinated effort to challenge the patent. While one IPR was denied institution, the subsequent PGR was successful in invalidating the entire patent. The patent owner did not successfully appeal the PGR decision to the Federal Circuit, further solidifying the invalidity finding.

Recommended next steps

As a defendant, the most critical piece of information is that claims 1-20 of US11017020 have been invalidated. Any assertion based on these claims has no merit.

It is recommended to explicitly link to the Final Written Decision for PGR2022-00006, which provides the disposition canceling all claims:

• Unified Patents, LLC v. MemoryWeb LLC, PGR2022-00006, Paper 45, Final Written Decision (PTAB Apr. 18, 2023). The disposition states: "For the foregoing reasons, we determine that Petitioner has shown by a preponderance of the evidence that claims 1-20 are unpatentable under 35 U.S.C. § 101. We further determine that Petitioner has shown by a preponderance of the evidence that claims 1-20 are unpatentable under 35 U.S.C. § 103. Accordingly, we conclude that claims 1-20 are unpatentable."

Given that all claims have been canceled, there are no active proceedings or future milestones to track that would directly impact the validity of the claims. The absence of an appeal to the Federal Circuit further reinforces the finality of the PTAB's decision.