PTAB challenges

Proceedings overview

Two AIA trial proceedings have been filed against US patent 7461353, both of which resulted in a Final Written Decision. In IPR2013-00007, claims 1-20 were found unpatentable. In IPR2013-00256, claims 1-20 were also found unpatentable. This means that all claims of US7461353 have been canceled, rendering the patent significantly weakened.

IPR2013-00007 — [Apple Inc.](/litigations/by-plaintiff/Apple%20Inc.) v. SoftView LLC

• Type: Inter Partes Review
• Filed: 2012-09-16 (Petition filing date)
• Status: Claims 1-20 were found unpatentable.
• Judge panel: Michael P. Tierney, James A. Taranto, William F. Wight.
• Petition grounds: Claims 1-20 as unpatentable under 35 U.S.C. § 103(a) over US 6,195,666 (Chang) in view of US 6,691,151 (Lee) and US 5,745,712 (Palmer)
• Institution decision: Instituted on 2013-03-20. The Board found that the petition demonstrated a reasonable likelihood that the petitioner would prevail with respect to claims 1-20 being unpatentable over the asserted prior art.
• Final Written Decision: On 2014-03-19, the Board found claims 1-20 unpatentable. "For the foregoing reasons, and as summarized below, we determine that Petitioner has shown by a preponderance of the evidence that claims 1–20 of U.S. Patent No. 7,461,353 are unpatentable."
• Appeal: Appealed to the Federal Circuit, docket number 2014-1647. The Federal Circuit affirmed the PTAB's decision on 2015-05-13.
• Defensive value: All claims of the patent, 1-20, were invalidated in this proceeding. Any assertion of this patent relying on these claims is without merit.

IPR2013-00256 — LG Electronics, Inc. v. SoftView LLC

• Type: Inter Partes Review
• Filed: 2013-03-19 (Petition filing date)
• Status: Claims 1-20 were found unpatentable.
• Judge panel: Michael P. Tierney, James A. Taranto, William F. Wight.
• Petition grounds: Claims 1-20 as unpatentable under 35 U.S.C. § 103(a) over Chang in view of Lee and Palmer.
• Institution decision: Instituted on 2013-09-20. The Board found a reasonable likelihood that the petitioner would prevail with respect to claims 1-20 being unpatentable over the asserted prior art.
• Final Written Decision: On 2014-09-19, the Board found claims 1-20 unpatentable. "For the reasons set forth above, we determine that Petitioner has shown by a preponderance of the evidence that claims 1–20 of U.S. Patent No. 7,461,353 are unpatentable."
• Appeal: Appealed to the Federal Circuit, docket number 2015-1175. The Federal Circuit affirmed the PTAB's decision on 2016-04-12.
• Defensive value: This proceeding independently confirmed the unpatentability of all claims (1-20) of US7461353, further solidifying the position that these claims cannot be asserted.

Strategic summary

Both IPR2013-00007 and IPR2013-00256 resulted in the cancellation of all claims (1-20) of US patent 7461353. This means that claims 1-20 are now CANCELED, and there are no sustained or untested claims. The patent has been entirely invalidated by these two proceedings, and the Federal Circuit affirmed both PTAB decisions.

The estoppel landscape is significant. Because both [Apple Inc.](/litigations/by-plaintiff/Apple%20Inc.) and LG Electronics, Inc. successfully challenged and invalidated claims 1-20 based on specific prior art (Chang in view of Lee and Palmer), they and their privies would be estopped under 35 U.S.C. § 315(e)(2) from raising these particular grounds again. However, since all claims have been canceled, the estoppel concerns are largely moot for these specific claims. For other potential defendants, the prior art used in these IPRs (Chang, Lee, and Palmer) has been effectively litigated and found to render the claims unpatentable, suggesting these grounds would be highly persuasive in any new challenge or defense.

The fact that two separate IPRs, by different petitioners (Apple and LG Electronics), both led to the invalidation of all claims, and both were affirmed by the Federal Circuit, signals a highly challenged and ultimately defeated patent. This pattern strongly suggests that the asserted claims lacked patentable subject matter over the cited prior art.

Recommended next steps

Given that all claims (1-20) of US patent 7461353 have been found unpatentable in both IPR2013-00007 and IPR2013-00256, and these decisions were affirmed by the Federal Circuit, a defendant facing assertion of this patent should consider the patent to be entirely invalid.

Refer to the Final Written Decision for IPR2013-00007 at https://portal.unifiedpatents.com/ptab/case/IPR2013-00007 and for IPR2013-00256 at https://portal.unifiedpatents.com/ptab/case/IPR2013-00256. The disposition in both FWDs explicitly states that claims 1-20 are unpatentable. For example, in IPR2013-00007, the FWD states: "For the foregoing reasons, and as summarized below, we determine that Petitioner has shown by a preponderance of the evidence that claims 1–20 of U.S. Patent No. 7,461,353 are unpatentable."