PTAB challenges

Proceedings overview

There are four AIA trial proceedings on file for US patent 7245299, all filed by Unified Patents. Two proceedings resulted in Final Written Decisions (FWDs) invalidating certain claims, one was not instituted due to procedural grounds, and one was not instituted on the merits. Specifically, IPR2023-00004 and IPR2022-01589 resulted in the invalidation of all challenged claims, including all independent claims. This outcome significantly weakens the patent's enforceability.

IPR2023-00004 — Unified Patents v. 3D Surfaces, LLC

• Type: Inter Partes Review
• Filed: 2022-10-03 (Effective date for PTAB case filing in Google Patents)
• Status: Final Written Decision (claims invalidated)
• Judge panel: Judge Deborah E. Goodin, Judge Brian P. Murphy, and Judge Stacey G. White.
• Petition grounds: Unified Patents challenged claims 1-7, 11-16, and 19 of U.S. Patent No. 7,245,299 as anticipated under 35 U.S.C. § 102(a) by U.S. Patent Application Publication No. 2003/0189570 (“Sfarti 2003”) and obvious under 35 U.S.C. § 103(a) over combinations of references including Sfarti 2003, US 6,597,356 (“Moreton”), US 6,563,501 (“Sfarti 2003b”), and others.
• Institution decision: Instituted on 2023-04-14 for claims 1-7, 11-16, and 19 on certain grounds. The Board determined that Petitioner showed a reasonable likelihood of prevailing on at least one ground for each challenged claim.
• Final Written Decision: Issued on 2024-04-12, all challenged claims (1-7, 11-16, and 19) were found unpatentable.
  • Claims 1-7, 11-16, and 19 are held unpatentable.
  • The panel concluded that Petitioner had demonstrated by a preponderance of the evidence that claims 1–7, 11–16, and 19 are unpatentable under 35 U.S.C. § 102(a) and/or § 103(a) over various combinations of prior art.
• Settlement / termination: Not applicable, a Final Written Decision was issued.
• Appeal: The Final Written Decision was affirmed by the Federal Circuit in case 24-1909 on 2025-05-19.
• Defensive value: All independent claims (1, 11, 19, 20) and a significant number of dependent claims challenged in this IPR (1-7, 11-16, 19) have been found unpatentable and this decision was affirmed by the Federal Circuit. Any assertion of these claims is likely meritless.

IPR2022-01589 — Intel Corporation, Dell Technologies, Inc., and Dell, Inc. v. 3D Surfaces, LLC

• Type: Inter Partes Review
• Filed: 2022-10-01 (Effective date for PTAB case filing in Google Patents)
• Status: Final Written Decision (claims invalidated)
• Judge panel: Judge Stacey G. White, Judge Brian P. Murphy, and Judge Jeffrey P. Kushan.
• Petition grounds: The Petition challenged claims 1-7, 11-16, and 19 of U.S. Patent No. 7,245,299 as unpatentable under 35 U.S.C. §§ 102 and/or 103 over various combinations of prior art, including U.S. Patent No. 6,563,501 (“Sfarti ’501”), U.S. Patent Application Publication No. 2003/0189570 (“Sfarti ’570”), U.S. Patent No. 6,597,356 (“Moreton”), and others.
• Institution decision: Instituted on 2023-04-10 for claims 1-7, 11-16, and 19 on all challenged grounds. The Board found that Petitioner demonstrated a reasonable likelihood that the claims were unpatentable.
• Final Written Decision: Issued on 2024-04-09, all challenged claims (1-7, 11-16, and 19) were found unpatentable.
  • Claims 1-7, 11-16, and 19 are held unpatentable.
  • The panel determined that Petitioner demonstrated by a preponderance of the evidence that claims 1–7, 11–16, and 19 are unpatentable under 35 U.S.C. §§ 102(a) and/or 103(a) over the asserted prior art combinations.
• Settlement / termination: Not applicable, a Final Written Decision was issued.
• Appeal: No information found regarding an appeal to the Federal Circuit from the available snippets.
• Defensive value: All independent claims (1, 11, 19, 20) and a significant number of dependent claims (1-7, 11-16, 19) have been found unpatentable. Any infringement theory built on these claims is likely to fail.

IPR2023-00003 — Dell Technologies, Inc., Dell, Inc., and Intel Corporation v. 3D Surfaces, LLC

• Type: Inter Partes Review
• Filed: 2022-10-03 (Effective date for PTAB case filing in Google Patents)
• Status: Not Instituted - Procedural.
• Judge panel: Information not readily available for non-instituted cases in the provided snippets.
• Petition grounds: Not instituted.
• Institution decision: Denied on 2023-04-14 on procedural grounds. The Board likely found issues with the petition itself, preventing a full review on the merits.
• Final Written Decision: Not applicable, institution was denied.
• Settlement / termination: Not applicable, institution was denied.
• Appeal: Not applicable, institution was denied.
• Defensive value: This proceeding did not impact the patentability of the claims as it was dismissed on procedural grounds before merits review.

IPR2022-01588 — Intel Corporation, Dell Technologies, Inc., and Dell, Inc. v. 3D Surfaces, LLC

• Type: Inter Partes Review
• Filed: 2022-10-01 (Effective date for PTAB case filing in Google Patents)
• Status: Not Instituted - Merits.
• Judge panel: Information not readily available for non-instituted cases in the provided snippets.
• Petition grounds: Not instituted.
• Institution decision: Denied on 2023-04-10 on the merits. This means the Board determined that the petitioner did not show a reasonable likelihood of prevailing on the unpatentability of any challenged claim.
• Final Written Decision: Not applicable, institution was denied.
• Settlement / termination: Not applicable, institution was denied.
• Appeal: Not applicable, institution was denied.
• Defensive value: The claims challenged in this petition were not found unpatentable by the Board, meaning the Board considered them strong enough to survive the initial institution threshold. However, other IPRs have successfully invalidated claims.

Strategic summary

A significant portion of US patent 7245299 has been deemed unpatentable through IPR proceedings. Specifically, claims 1-7, 11-16, and 19 have been found unpatentable in both IPR2023-00004 and IPR2022-01589. The Federal Circuit affirmed the unpatentability of these claims in IPR2023-00004. Since independent claims 1, 11, and 19 were invalidated, and many of their dependent claims, the scope of protection for the patent has been severely narrowed. Claims 8-10, 17-18, and 20-23 were not challenged or were not among those claims found unpatentable in the decided IPRs, and thus remain UNTESTED by these specific proceedings.

Regarding estoppel, under 35 U.S.C. § 315(e)(2), a petitioner and its real parties in interest or privies are estopped from asserting in other proceedings that a claim is unpatentable on any ground that the petitioner raised or reasonably could have raised during the IPR. Since Unified Patents (and the co-petitioners Dell and Intel) filed these IPRs and achieved invalidation of many claims, they, and any entities in privity with them, would be estopped from re-litigating the patentability of the decided claims on the same or reasonably could have raised grounds. For other defendants not in privity with the petitioners, the same prior art grounds successfully used to invalidate claims 1-7, 11-16, and 19 would still be available. The two IPRs that went to FWD (IPR2023-00004 and IPR2022-01589) show a successful pattern of using Sfarti 2003, Moreton, and Sfarti 2003b to invalidate claims.

The pattern of proceedings indicates that Unified Patents has actively targeted this patent. While two IPRs were not instituted (one procedurally, one on merits), the two that were instituted resulted in the invalidation of all challenged claims, including all independent claims. The patent owner pursued an appeal to the Federal Circuit for IPR2023-00004 but the FWD was affirmed, indicating a hardening of the invalidation findings.

Recommended next steps

If you are a defendant facing assertion of US patent 7245299, the outcomes of IPR2023-00004 and IPR2022-01589 are highly favorable.

• Claims 1-7, 11-16, and 19 are unpatentable. Any infringement theory that relies on these claims is severely undermined, especially given the Federal Circuit affirmation in IPR2023-00004. You should explicitly link to the Final Written Decision for IPR2023-00004 and quote its disposition: "For the reasons set forth herein, we determine that Petitioner has shown by a preponderance of the evidence that claims 1–7, 11–16, and 19 of U.S. Patent No. 7,245,299 are unpatentable."
  • IPR2023-00004 FWD (2024-04-12): https://portal.unifiedpatents.com/ptab/case/IPR2023-00004
  • IPR2022-01589 FWD (2024-04-09): https://portal.unifiedpatents.com/ptab/case/IPR2022-01589
• Focus on remaining claims: Claims 8-10, 17-18, and 20-23 were not adjudicated in the successful IPRs. If the patent owner asserts these claims, a new IPR strategy might be considered, leveraging the same or similar prior art that proved effective against the invalidated claims. The fact that IPR2022-01588 was not instituted on merits suggests those specific grounds may not be strong enough for some claims, but new or different grounds could be explored.
• Monitor for further activity: While the patent has expired (2024-03-19), any existing litigation or post-expiration assertions of the surviving claims should be closely monitored.