PTAB challenges

Proceedings overview

Two AIA trial proceedings have been filed against US Patent 8102833. Both were Inter Partes Reviews (IPRs) and both were denied institution. This gives a defendant a posture where the patent has survived two IPR attempts, suggesting a hardened patent against these specific challenges.

IPR2018-00807 — Huawei Device Co., Ltd., Huawei Technologies Co. v. HPS Investment Partners, LLC

• Type: Inter Partes Review
• Filed: 2018-05-29 (Petition filed; official entry in Google Patents is 2018-05-29)
• Status: Not Instituted - Merits. The PTAB declined to institute review on the merits of the petition.
• Judge panel: Not publicly available in the provided patent text or readily found via a quick search without direct access to PTAB E2E.
• Petition grounds: Not publicly available in the provided patent text.
• Institution decision: Denied. The Google Patents entry states "Not Instituted - Merits". The specific date of the decision is not provided in the supplied text.
• Final Written Decision (if issued): Not applicable as institution was denied.
• Settlement / termination: Not applicable as institution was denied.
• Appeal: No appeal to the Federal Circuit is noted in the provided patent text for this specific IPR.
• Defensive value: The patent owner prevailed, meaning the claims challenged in this IPR remain intact. An IPR-based defense using the same or similar grounds would likely be more challenging.

IPR2020-00465 — [Apple Inc.](/litigations/by-plaintiff/Apple%20Inc.) v. HPS Investment Partners, LLC

• Type: Inter Partes Review
• Filed: 2020-04-14 (Petition filed; official entry in Google Patents is 2020-04-14)
• Status: Not Instituted - Procedural. The PTAB declined to institute review on procedural grounds.
• Judge panel: Not publicly available in the provided patent text or readily found via a quick search without direct access to PTAB E2E.
• Petition grounds: Not publicly available in the provided patent text.
• Institution decision: Denied. The Google Patents entry states "Not Instituted - Procedural". The specific date of the decision is not provided in the supplied text.
• Final Written Decision (if issued): Not applicable as institution was denied.
• Settlement / termination: Not applicable as institution was denied.
• Appeal: No appeal to the Federal Circuit is noted in the provided patent text for this specific IPR.
• Defensive value: The patent owner prevailed on procedural grounds, meaning the claims challenged in this IPR remain intact. A defendant would need to identify new and compelling prior art or different legal arguments to succeed in a new IPR.

Strategic summary

All claims of US8102833 are currently SUSTAINED and UNTESTED through to a Final Written Decision. While two IPR petitions were filed (IPR2018-00807 by Huawei and IPR2020-00465 by Apple), both were ultimately denied institution. This means no claims of US8102833 have been canceled by the PTAB.

Regarding estoppel, since neither IPR proceeded to a Final Written Decision, § 315(e)(2) estoppel, which bars petitioners and their privies from raising grounds they raised or reasonably could have raised, does not apply to Huawei or Apple with respect to these specific IPRs. Therefore, theoretically, these petitioners (or their privies) could potentially bring new IPR petitions on different grounds or overcome the previous institution denials. For other defendants facing assertion of this patent, the full range of prior-art grounds under § 102 and § 103 remain available, as the PTAB has not made a merits determination on any claim.

The pattern of two institution denials suggests that the patent owner, HPS Investment Partners LLC, has successfully defended the patent against initial challenges. The involvement of companies like Huawei and Apple indicates the patent's relevance in the wireless communication space and its potential for assertion against industry players. Unified Patents also filed two PTAB cases, IPR2018-00807 and IPR2020-00465, against this patent.

Recommended next steps

Since both IPRs were denied institution, there are no PTAB Final Written Decisions to link to with claim invalidations. The patent is currently considered "hardened" against the specific challenges raised in those two petitions. However, the absence of a merits decision means the claims themselves have not been thoroughly tested at the PTAB. A defendant facing assertion of US8102833 should:

• Conduct a thorough prior art search: Since no claims were invalidated, new and compelling prior art not considered in the previous petitions would be crucial for any future PTAB challenge.
• Analyze the reasons for institution denial: Understanding why the previous petitions were denied (merits for IPR2018-00807 and procedural for IPR2020-00465) is critical. This analysis would inform whether a new petition could overcome those deficiencies.
• Evaluate the full claim set: As no claims were invalidated, all claims are currently assertable. A defendant should analyze the full scope of claims and their potential infringement.