PTAB challenges

Proceedings overview

One AIA trial proceeding has been filed against US7940851, resulting in some claims being invalidated and others sustained. This gives a defendant a stronger defensive posture as some claims are no longer assertable.

IPR2018-00585 — Unified Patents, LLC v. Optis Wireless Technology, LLC

• Type: Inter Partes Review
• Filed: 2018-01-19
• Status: Final Written Decision
• Judge panel: Judge Michael P. Tierney, Judge Phillip J. Hoff, Judge Barry S. Grossman
• Petition grounds: The petition challenged claims 1-5 of U.S. Patent No. 7,940,851 as obvious over various combinations of prior art, including EP 1 615 250 A2 (Yamaguchi) and US 2005/0286475 A1 (Montojo).
• Institution decision: Instituted on 2018-07-27. The panel found that Unified Patents, LLC had a reasonable likelihood of prevailing with respect to at least one claim challenged.
• Final Written Decision (if issued): Issued on 2019-07-26. The PTAB found that claims 2, 4, and 5 were unpatentable. Claims 1 and 3 were found patentable. The panel reasoned that "Petitioner has shown by a preponderance of the evidence that claims 2, 4, and 5 are unpatentable as obvious."
• Settlement / termination: Not settled. Proceeded to a Final Written Decision.
• Appeal: The Final Written Decision was appealed to the Federal Circuit. The appeal was dismissed on 2020-05-18.
• Defensive value: Claims 2, 4, and 5 of US7940851 have been invalidated. Any infringement theory relying on these claims is significantly weakened. Claims 1 and 3, however, were sustained and remain assertable.

Strategic summary

Claims 2, 4, and 5 of US7940851 are now CANCELED, while claims 1 and 3 were SUSTAINED. This significantly narrows the scope of the patent. Claims 1 and 3 were the only claims that survived the IPR.

Regarding estoppel, Unified Patents, LLC, and any parties in privity with them, are barred under § 315(e)(2) from asserting any invalidity grounds they raised or reasonably could have raised against claims 1 and 3 in IPR2018-00585. For a defendant not in privity with Unified Patents, LLC, prior art grounds not raised in the IPR, or grounds challenging the patentability of claims 1 and 3 based on different prior art, may still be available.

The IPR was initiated by Unified Patents, a defensive aggregator, which indicates that the patent owner, Optis Wireless Technology, LLC, is likely an entity that asserts patents.

Recommended next steps

For a defendant facing assertion of this patent, it is crucial to review the Final Written Decision in IPR2018-00585, available on the USPTO PTAB Decisions portal. Specifically, the disposition of the FWD states: "For the foregoing reasons, we determine that Petitioner has shown by a preponderance of the evidence that claims 2, 4, and 5 are unpatentable. We further determine that Petitioner has not shown that claims 1 and 3 are unpatentable." This means that claims 2, 4, and 5 cannot be asserted. Defense counsel should focus on non-infringement arguments for the surviving claims (1 and 3) or explore new invalidity grounds against them that were not, and could not reasonably have been, raised in the IPR.