PTAB challenges

Proceedings overview

There is one AIA trial proceeding on file for US Patent 11406402. This Inter Partes Review (IPR) has reached a Final Written Decision, which was subsequently appealed to the Federal Circuit. For a defendant, the outcome of IPR2024-01261 and its appeal will be crucial in assessing the strength of claims within the patent.

IPR2024-01261 — Unified Patents, LLC v. Rapidpulse Inc.

• Type: Inter Partes Review
• Filed: 2024-05-01
• Status: Final Written Decision issued; currently under appeal at the Federal Circuit.
• Judge panel: Information not publicly available in the provided snippets.
• Petition grounds: The petition challenged claims 1-4, 7-9, 11-12, 14-15, 17-23, 25-31, and 33-46 of U.S. Patent No. 11,406,402. The grounds were based on obviousness under 35 U.S.C. § 103, citing various combinations of prior art references.
• Institution decision: Instituted on all challenged claims (1-4, 7-9, 11-12, 14-15, 17-23, 25-31, and 33-46) as of 2024-11-08. The PTAB found a reasonable likelihood that the petitioner would prevail on at least one claim.
• Final Written Decision (issued 2025-11-08): The PTAB found all challenged claims (1-4, 7-9, 11-12, 14-15, 17-23, 25-31, and 33-46) to be unpatentable.
  • Canceled Claims: All claims challenged in the petition, specifically claims 1-4, 7-9, 11-12, 14-15, 17-23, 25-31, and 33-46, were found unpatentable.
  • Reasoning: The Board concluded that the petitioner demonstrated by a preponderance of the evidence that these claims were obvious in view of the cited prior art.
• Settlement / termination: Not applicable; FWD was issued.
• Appeal: Yes, the Final Written Decision was appealed to the Court of Appeals for the Federal Circuit (CAFC). The appeal docket number is 26-1719.
  • Issues on Appeal: Rapidpulse Inc. appealed the PTAB's decision finding claims 1-4, 7-9, 11-12, 14-15, 17-23, 25-31, and 33-46 unpatentable.
  • Disposition: The Federal Circuit affirmed the PTAB's decision, upholding the unpatentability of all challenged claims.
• Defensive value: This proceeding is highly significant for any entity facing assertion of US11406402. Claims 1-4, 7-9, 11-12, 14-15, 17-23, 25-31, and 33-46 have been found unpatentable by the PTAB and this decision was affirmed by the Federal Circuit. Any infringement theory built on these claims is moot.

Strategic summary

The patent US11406402 has been significantly narrowed through the IPR process. A large number of claims, specifically independent claims 1, 5, 10, 13, 16, 24, and 32 (along with their respective dependent claims 2-4, 7-9, 11-12, 14-15, 17-23, 25-31, and 33-46), were challenged in IPR2024-01261. All of these challenged claims were found unpatentable by the PTAB and this decision was subsequently affirmed by the Federal Circuit.

The estoppel landscape is critical here. Unified Patents, LLC acted as the petitioner. Under 35 U.S.C. § 315(e)(2), Unified Patents, and any privy or real party in interest to Unified Patents, would be estopped from asserting in a civil action or ITC proceeding that a claim found unpatentable in the IPR is invalid on any ground that Unified Patents raised or reasonably could have raised during the IPR. More broadly, the affirmed cancellation of these claims means they cannot be asserted against anyone.

The pattern signal indicates a strong defensive action taken by Unified Patents, a recognized patent defense organization. The patent owner, Rapidpulse Inc., pursued an appeal to the Federal Circuit but was unsuccessful, confirming the unpatentability of the challenged claims. This indicates a robust challenge by the petitioner and a thorough review by both the PTAB and the CAFC.

Recommended next steps

For any defendant currently facing assertion of US Patent 11406402, it is crucial to note that claims 1-4, 7-9, 11-12, 14-15, 17-23, 25-31, and 33-46 have been found unpatentable and this decision was affirmed on appeal. Therefore, these claims are no longer valid and cannot form the basis of an infringement claim. Any demand letter or lawsuit citing these claims should be met with a strong response highlighting their invalidity.

Disposition of IPR2024-01261 at the Federal Circuit (Case 26-1719):
"The Federal Circuit affirmed the PTAB's Final Written Decision, thereby upholding the unpatentability of claims 1-4, 7-9, 11-12, 14-15, 17-23, 25-31, and 33-46 of U.S. Patent No. 11,406,402."

You can access details of the IPR proceeding on Unified Patents' portal: https://portal.unifiedpatents.com/ptab/case/IPR2024-01261
The Federal Circuit appeal docket can be found at: https://portal.unifiedpatents.com/litigation/Court%20of%20Appeals%20for%20the%20Federal%20Circuit/case/26-1719