PTAB challenges

Proceedings overview

No AIA (America Invents Act) trial proceedings, such as Inter Partes Reviews (IPRs), Post-Grant Reviews (PGRs), or Covered Business Method (CBM) reviews, are on file for US Patent 6,813,742 as of the most recent data ingest. However, the patent has undergone one ex parte reexamination, which concluded with claims 5 and 8 being canceled and the remaining claims (1-4, 6-7) being confirmed as patentable in an amended form. A second ex parte reexamination request was filed by Unified Patents, LLC on April 14, 2026, and is currently pending.

For a defendant facing assertion of this patent today, the key takeaway is that claims 5 and 8 are no longer valid, and claims 1-4, 6, and 7 survived a challenge and are patentable as amended. Any infringement theories must rely on the amended versions of claims 1-4, 6, and 7. The pending reexamination by Unified Patents could potentially impact the validity of the remaining claims.

90/008,189 — Ex Parte Reexamination of US 6,813,742 (Patent Owner: IComm Tech Inc)

• Type: Ex Parte Reexamination
• Filed: December 5, 2006 (Date of Request for Reexamination)
• Status: Concluded - Certificate Issued (February 10, 2009)
• Judge panel: Not applicable (ex parte reexaminations are handled by a Patent Examiner, not a PTAB panel).
• Petition grounds: The exact prior art and grounds raised by the third-party requester (who initiated this reexamination) are not detailed in the provided patent text. However, ex parte reexaminations are based on patents or printed publications relevant to 35 U.S.C. §§ 102 and 103.
• Institution decision: Reexamination was ordered (implied by the issuance of a certificate).
• Final Written Decision (if issued): A Reexamination Certificate (B1 6,813,742) was issued on February 10, 2009. The outcome stated that "CLAIMS 5 AND 8 ARE CANCELLED. CLAIMS 1-4, 6 AND 7 ARE DETERMINED TO BE PATENTABLE AS AMENDED."
• Settlement / termination: Not applicable for ex parte reexaminations.
• Appeal: Not applicable in the same manner as AIA trials; decisions are appealable within the USPTO and then to the Federal Circuit. No record of such an appeal for this reexamination is provided.
• Defensive value: Claims 5 and 8 of the original patent are no longer valid. Any current or future assertion of the patent cannot rely on these claims. Claims 1-4, 6, and 7 were confirmed as patentable as amended, meaning they survived a prior validity challenge. A defendant would need to analyze the specific amendments made to these claims during the reexamination to understand their current scope and potential for infringement.

Unified Patents, LLC v. Turbocode LLC (Ex Parte Reexamination Request filed 2026-04-14)

• Type: Ex Parte Reexamination Request
• Filed: April 14, 2026
• Status: Pending (Awaiting a determination of a Substantial New Question of Patentability (SNQ)).
• Judge panel: Not applicable at this stage.
• Petition grounds: Unified Patents, LLC typically challenges patents based on prior art (patents or printed publications) under 35 U.S.C. §§ 102 and 103. The specific claims challenged and the prior art cited are not publicly detailed in the provided patent information or search results.
• Institution decision: This request is pending. For requests filed on or after April 5, 2026, patent owners now have a new "pre-order" procedure to submit a paper within 30 days of service to argue against the finding of a Substantial New Question of Patentability (SNQ) before reexamination is ordered. The USPTO then has three months from the filing date to determine if an SNQ has been raised.
• Final Written Decision (if issued): Not yet issued as the request is still in its initial review phase.
• Settlement / termination: Not applicable.
• Appeal: Not applicable at this stage.
• Defensive value: This active reexamination represents a new challenge to the patent's validity. If reexamination is ordered and successful, it could lead to the cancellation or further amendment of the remaining claims (1-4, 6, 7). A defendant facing assertion could monitor this proceeding closely as its outcome will directly impact the strength of the patent.

Strategic summary

Currently, claims 5 and 8 of US 6,813,742 are CANCELED, while claims 1-4, 6, and 7 are SUSTAINED in their amended form following Ex Parte Reexamination Control No. 90/008,189. This significantly narrows the scope of the patent compared to its original issuance. The patent has been "hardened" in the sense that its surviving claims have withstood a prior validity challenge.

The estoppel landscape for ex parte reexaminations is generally different from IPRs. While an IPR FWD estops a petitioner and its privies from raising grounds raised or reasonably could have raised, ex parte reexaminations initiated by a third party do not typically create the same statutory estoppel under 335 U.S.C. § 315(e)(2) for that third party in subsequent litigation. However, if an ex parte reexamination is ordered, the patent owner can amend claims. A defendant being asserted against might still be able to use the same prior art, or new prior art, depending on the specifics and their involvement. Unified Patents is a defensive aggregator known for challenging patents, and their recent request signals a continued effort to invalidate this patent. The new USPTO pre-order procedure for ex parte reexaminations allows the patent owner to submit arguments against institution, a strategic consideration for both sides.

The current litigation history shows TurboCode LLC has been actively asserting this patent against numerous companies, often leading to confidential settlements. The reexamination by Unified Patents suggests a counter-strategy against this assertion pattern. The absence of AIA trial proceedings (IPR/PGR/CBM) for a patent that has been extensively litigated and held by an NPE like TurboCode LLC, especially given the increased use of ex parte reexaminations in Q1 2026, is noteworthy. This might be due to recent shifts in PTAB policies making IPRs harder to institute.

Recommended next steps

• For the concluded Ex Parte Reexamination (90/008,189): Defendants should obtain and thoroughly analyze the Reexamination Certificate B1 6,813,742 and its prosecution history. This will show the exact amendments made to claims 1-4, 6, and 7, which are now the only claims that can be asserted. Any infringement analysis must be based on the amended claim language.
  • Disposition for Claims 5 and 8: "CLAIMS 5 AND 8 ARE CANCELLED."
  • Disposition for Claims 1-4, 6, and 7: "CLAIMS 1-4, 6 AND 7 ARE DETERMINED TO BE PATENTABLE AS AMENDED."
• For the pending Ex Parte Reexamination by Unified Patents (filed 2026-04-14): Defendants should monitor this proceeding closely. The next significant milestone will be the USPTO's determination on whether a Substantial New Question of Patentability (SNQ) has been raised, which is expected within three months of the April 14, 2026 filing date (around mid-July 2026). If reexamination is ordered, the proceedings could lead to further claim invalidation or amendment, potentially weakening the patent owner's position.