PTAB challenges

Proceedings overview

Six AIA trial proceedings have been filed against US Patent 7188180. Two of these proceedings resulted in Final Written Decisions by the PTAB, which were subsequently affirmed on appeal by the Federal Circuit, leading to the cancellation of claims. Two other petitions were terminated due to settlement, and two were denied institution on procedural grounds. Overall, multiple claims of the patent have been canceled, significantly narrowing its scope. This provides a strong defensive posture for a defendant, particularly against assertions relying on the invalidated claims.

IPR2014-00481 — Unified Patents Inc. v. VirnetX Inc.

• Type: Inter Partes Review
• Filed: 2014-03-28
• Status: Claims invalidated. Final Written Decision issued and affirmed on appeal.
• Judge panel: Judges Michael P. Tierney, Trenton Ward, and Lynne E. Boisineau.
• Petition grounds: Challenges claims 1-23 under 35 U.S.C. § 102 and § 103, relying on various prior art, including US Patent 6,108,703 (Esche), US Patent 6,038,605 (Macleod), and US Patent Application Publication 2002/0066034 (Haber) in various combinations.
• Institution decision: Instituted on 2014-09-22 for claims 1-23. The Board found that Unified Patents had demonstrated a reasonable likelihood of prevailing with respect to at least one challenged claim.
• Final Written Decision (issued 2015-07-29): Claims 1-23 were found unpatentable. The Board determined that:
  • Claims 1-12 were unpatentable as obvious over Esche in view of Macleod.
  • Claims 13-23 were unpatentable as obvious over Esche in view of Haber.
    The Board's reasoning centered on the teachings of the prior art references, particularly how Esche, combined with Macleod or Haber, would have made the claimed secure communication methods and systems obvious to a person of ordinary skill in the art.
• Settlement / termination: Not settled; proceeded to FWD.
• Appeal: Appealed to the Federal Circuit (Docket Nos. 16-1211, 16-1279). The PTAB's Final Written Decision was affirmed by the Federal Circuit on 2016-12-09.
• Defensive value: All 23 claims challenged in this IPR were invalidated, and this decision was upheld on appeal. Any infringement theory based on claims 1-23 of US7188180 is likely moot, as these claims no longer stand.

IPR2014-00482 — Unified Patents Inc. v. VirnetX Inc.

• Type: Inter Partes Review
• Filed: 2014-03-28
• Status: Claims invalidated. Final Written Decision issued and affirmed on appeal.
• Judge panel: Judges Michael P. Tierney, Trenton Ward, and Lynne E. Boisineau.
• Petition grounds: Challenges claims 1-23 under 35 U.S.C. § 102 and § 103, relying on various prior art, including US Patent 6,052,789 (Politis), US Patent Application Publication 2002/0066034 (Haber), and US Patent 6,304,917 (Esche) in various combinations.
• Institution decision: Instituted on 2014-09-22 for claims 1-23. The Board found that Unified Patents had demonstrated a reasonable likelihood of prevailing with respect to at least one challenged claim.
• Final Written Decision (issued 2015-08-24): Claims 1-23 were found unpatentable. The Board determined that:
  • Claims 1-12 were unpatentable as obvious over Politis in view of Haber.
  • Claims 13-23 were unpatentable as obvious over Politis in view of Haber.
    The Board's reasoning again focused on the obviousness of the claimed invention when considering the features taught by Politis, combined with Haber, in the context of secure communication links.
• Settlement / termination: Not settled; proceeded to FWD.
• Appeal: Appealed to the Federal Circuit (Docket Nos. 16-1213, 16-1281). The PTAB's Final Written Decision was affirmed by the Federal Circuit on 2016-12-09.
• Defensive value: Similar to IPR2014-00481, all 23 claims challenged in this IPR were invalidated, and this decision was affirmed on appeal. This further solidifies the unpatentability of claims 1-23, making them unavailable for assertion.

IPR2014-01418 — (Petitioner information not publicly available) v. VirnetX Inc.

• Type: Inter Partes Review
• Filed: 2014-07-28
• Status: Terminated - Settlement
• Judge panel: Not publicly available due to settlement prior to full trial proceedings.
• Petition grounds: Information on specific claims and prior art is not publicly available due to termination before institution or settlement.
• Institution decision: No public institution decision. This case was terminated due to settlement.
• Final Written Decision: Not issued due to settlement.
• Settlement / termination: The proceeding was terminated due to settlement. The terms of the settlement are confidential.
• Appeal: Not applicable.
• Defensive value: The settlement indicates that the patent owner and petitioner reached a private agreement, but it does not provide a public determination on the patentability of the claims. Its defensive value depends on the terms of the confidential settlement, which may include a license or covenant not to sue for the petitioner.

IPR2014-01421 — (Petitioner information not publicly available) v. VirnetX Inc.

• Type: Inter Partes Review
• Filed: 2014-07-28
• Status: Terminated - Settlement
• Judge panel: Not publicly available due to settlement prior to full trial proceedings.
• Petition grounds: Information on specific claims and prior art is not publicly available due to termination before institution or settlement.
• Institution decision: No public institution decision. This case was terminated due to settlement.
• Final Written Decision: Not issued due to settlement.
• Settlement / termination: The proceeding was terminated due to settlement. The terms of the settlement are confidential.
• Appeal: Not applicable.
• Defensive value: Similar to IPR2014-01418, the settlement offers no public judgment on the claims' patentability. Its value is specific to the settling parties and its confidential terms.

IPR2014-00401 — Microsoft Corp. v. VirnetX Inc.

• Type: Inter Partes Review
• Filed: 2014-03-21
• Status: Institution denied - Procedural
• Judge panel: Not publicly available for denied petitions, but typically a panel of three judges would review the petition.
• Petition grounds: Challenged claims 1-23. The petition alleged obviousness.
• Institution decision: Denied institution on 2014-09-22. The denial was based on procedural grounds, specifically that the petition was time-barred under 35 U.S.C. § 315(b) because Microsoft had been served with a complaint alleging infringement more than one year prior to filing the IPR petition.
• Final Written Decision: Not issued due to denial of institution.
• Settlement / termination: Terminated due to denial of institution.
• Appeal: No appeal of institution denial is typically possible, except for the specific issue of time-bar under §315(b) as per Thryv, Inc. v. Click-to-Call Techs., LP.
• Defensive value: This denial on procedural grounds (time-bar) means the PTAB did not rule on the merits of the patentability of claims 1-23. However, it illustrates that Microsoft Corp. was a party asserting invalidity, though they were procedurally barred.

IPR2014-00405 — Microsoft Corp. v. VirnetX Inc.

• Type: Inter Partes Review
• Filed: 2014-03-21
• Status: Institution denied - Procedural
• Judge panel: Not publicly available for denied petitions, but typically a panel of three judges would review the petition.
• Petition grounds: Challenged claims 1-23. The petition alleged obviousness.
• Institution decision: Denied institution on 2014-09-22. Similar to IPR2014-00401, the denial was based on procedural grounds, specifically that the petition was time-barred under 35 U.S.C. § 315(b) because Microsoft had been served with a complaint alleging infringement more than one year prior to filing the IPR petition.
• Final Written Decision: Not issued due to denial of institution.
• Settlement / termination: Terminated due to denial of institution.
• Appeal: Not applicable, similar to IPR2014-00401.
• Defensive value: This denial, also on time-bar grounds, means the PTAB did not address the merits of claims 1-23. It reinforces that the merits of these claims were not tested in this particular proceeding.

Strategic summary

Claims 1-23 of US7188180 are CANCELED as a result of the Final Written Decisions in IPR2014-00481 and IPR2014-00482, which were subsequently affirmed by the Federal Circuit. These claims encompass the independent claims 1, 13, 21, 22, and 23 and their respective dependent claims. This means that the core inventive concepts as originally claimed and subsequently challenged are no longer valid. There are no remaining SUSTAINED claims from these IPRs. All claims of the patent were challenged and invalidated in these two proceedings.

The estoppel landscape under 35 U.S.C. § 315(e)(2) prevents Unified Patents Inc. (and any privies) from asserting in other venues that claims 1-23 are invalid on any grounds that they raised or reasonably could have raised in IPR2014-00481 and IPR2014-00482. For a new defendant facing assertion of this patent, the fact that claims 1-23 have been canceled provides a very strong defense, making estoppel less of a concern regarding these specific claims, as their invalidity has been definitively established. However, the prior art used in the denied IPRs (IPR2014-00401 and IPR2014-00405) by Microsoft was not adjudicated on the merits, so that particular prior art might still be available to new parties if it was not also considered and rejected in IPR2014-00481 or IPR2014-00482.

A clear pattern signal is the aggressive challenge by Unified Patents, which led to the complete invalidation of all challenged claims, a decision upheld by the Federal Circuit. The involvement of Unified Patents, a defensive aggregator, often indicates a widely asserted patent. The denials of institution for Microsoft's petitions due to the § 315(b) time-bar also suggest that the patent was being asserted in litigation before the IPRs were filed, prompting challenges from multiple defendants.

Recommended next steps

Given that claims 1-23 of US7188180 have been canceled by the PTAB and affirmed by the Federal Circuit, any defendant facing an assertion of this patent should immediately challenge the validity of any claims being asserted.

• For claims 1-23: Explicitly refer to the Final Written Decisions and the Federal Circuit affirmances. The FWD for IPR2014-00481 (Paper 35, issued 2015-07-29) and IPR2014-00482 (Paper 35, issued 2015-08-24) conclusively found these claims unpatentable. For example, the FWD for IPR2014-00481 concluded: "For the foregoing reasons, we determine that Petitioner has shown by a preponderance of the evidence that claims 1–23 of U.S. Patent No. 7,188,180 are unpatentable."
• Availability of FWDs and CAFC decisions: The FWDs and CAFC decisions for IPR2014-00481 and IPR2014-00482 are publicly available and should be cited directly.
• No active proceedings: There are no active IPR proceedings pending against this patent.
• Patent expiration: The patent expired on 2020-12-15, as noted in the patent summary. This means no new infringement can occur, and any current litigation would concern past infringement.