PTAB challenges

Proceedings overview

There are four AIA trial proceedings on file for US Patent 8,190,610. Two petitions were denied institution on the merits, and two proceedings were terminated due to settlement. This gives a defendant a somewhat hardened defensive posture, as two attempts to challenge the patent through IPR were unsuccessful on their merits at the institution stage. No claims have been invalidated by the PTAB.

IPR2024-00659 — Databricks, Inc. v. Starboard Value Intermediate Fund LP (Patent Owner)

• Type: Inter Partes Review
• Filed: 2024-03-06
• Status: Not Instituted - Merits. The petition was denied institution because the petitioner failed to demonstrate a reasonable likelihood of prevailing on the challenged claims.
• Judge panel: Undisclosed in publicly available snippet.
• Petition grounds: The petition challenged claims 1-5, 7, 12, 16, 17, 21, 23, 24, 28, 29, 33, 34, 39-41, and 45-46 of U.S. Patent No. 8,190,610 as obvious over various combinations of prior art, including Dean and Ghemawat, and US 7,103,590.
• Institution decision: Denied on merits, entered on 2024-09-04. The Board found that the petition did not demonstrate a reasonable likelihood that the petitioner would prevail with respect to at least one claim challenged.
• Final Written Decision: Not applicable as institution was denied.
• Settlement / termination: Not applicable.
• Appeal: No appeal noted for the denial of institution.
• Defensive value: This denial of institution, specifically based on the merits, strengthens the patent owner's position regarding the challenged claims (1-5, 7, 12, 16, 17, 21, 23, 24, 28, 29, 33, 34, 39-41, and 45-46). A future petitioner challenging the same claims with the same or substantially similar art would need to present significantly different arguments to overcome this precedent.

IPR2024-00303 — Cloudera, Inc. v. Starboard Value Intermediate Fund LP (Patent Owner)

• Type: Inter Partes Review
• Filed: 2023-12-18
• Status: Not Instituted - Merits. The petition was denied institution because the petitioner failed to demonstrate a reasonable likelihood of prevailing on the challenged claims.
• Judge panel: Undisclosed in publicly available snippet.
• Petition grounds: The petition challenged claims 1-3, 5-7, 9-14, 16-18, 20-22, 24-26, 28-34, 36, and 38-46 of U.S. Patent No. 8,190,610 as anticipated and/or obvious over various combinations of prior art, including Dean and Ghemawat.
• Institution decision: Denied on merits, entered on 2024-06-25. The Board found that the petition did not demonstrate a reasonable likelihood that the petitioner would prevail with respect to at least one claim challenged.
• Final Written Decision: Not applicable as institution was denied.
• Settlement / termination: Not applicable.
• Appeal: No appeal noted for the denial of institution.
• Defensive value: Similar to IPR2024-00659, this denial of institution on the merits reinforces the patent's validity for the challenged claims (1-3, 5-7, 9-14, 16-18, 20-22, 24-26, 28-34, 36, and 38-46). Future IPR challenges against these claims would face an uphill battle if relying on similar grounds.

IPR2023-00689 — American Airlines, Inc. and Hilton Domestic Operating Company, Inc. v. Starboard Value Intermediate Fund LP (Patent Owner)

• Type: Inter Partes Review
• Filed: 2023-03-07
• Status: Settlement. The proceeding was terminated due to a settlement between the parties.
• Judge panel: Undisclosed in publicly available snippet.
• Petition grounds: The petition challenged claims 1-16, 20-32, and 34-46 of U.S. Patent No. 8,190,610 as anticipated and/or obvious over various combinations of prior art, including Dean and Ghemawat.
• Institution decision: The petition was instituted as to claims 1-5, 7, 12, 16, 21, 23, 24, 28, 29, 33, 34, 39-41, and 45-46 on 2023-09-12. The Board found a reasonable likelihood that the petitioner would prevail on at least some grounds for these claims.
• Final Written Decision: Not issued due to settlement.
• Settlement / termination: Terminated via settlement on 2024-03-11. The terms of the settlement are typically confidential.
• Appeal: Not applicable due to settlement.
• Defensive value: While institution was granted for a subset of claims, the subsequent settlement means that no claims were invalidated. This IPR does not provide a definitive ruling on the patentability of the challenged claims. For a defendant, the settlement suggests that the patent owner perceived value in avoiding a final decision, but the specific terms of the settlement are unknown.

IPR2022-01405 — FedEx Corporate Services, Inc. v. Starboard Value Intermediate Fund LP (Patent Owner)

• Type: Inter Partes Review
• Filed: 2022-08-15
• Status: Settlement. The proceeding was terminated due to a settlement between the parties.
• Judge panel: Undisclosed in publicly available snippet.
• Petition grounds: The petition challenged claims 1-16, 20-32, and 34-46 of U.S. Patent No. 8,190,610 as anticipated and/or obvious over various combinations of prior art.
• Institution decision: The petition was instituted as to claims 1-5, 7, 12, 16, 21, 23, 24, 28, 29, 33, 34, 39-41, and 45-46 on 2023-02-23. The Board found a reasonable likelihood that the petitioner would prevail on at least some grounds for these claims.
• Final Written Decision: Not issued due to settlement.
• Settlement / termination: Terminated via settlement on 2023-08-25. The terms of the settlement are typically confidential.
• Appeal: Not applicable due to settlement.
• Defensive value: Similar to IPR2023-00689, this IPR was instituted for a subset of claims but settled before a Final Written Decision. No claims were invalidated. The settlement terms are confidential, but the institution itself indicated the PTAB found the challenges to certain claims sufficiently compelling to proceed to trial.

Strategic summary

None of the claims of US8190610 have been canceled by the PTAB. Claims 1-5, 7, 12, 16, 21, 23, 24, 28, 29, 33, 34, 39-41, and 45-46 were challenged and instituted in IPR2023-00689 and IPR2022-01405, but these proceedings settled. These claims remain valid and enforceable, but the institution decisions indicate that the PTAB found the petitioners' arguments to be sufficiently strong to warrant a full trial. Claims 1-3, 5-7, 9-14, 16-18, 20-22, 24-26, 28-34, 36, and 38-46 were challenged in IPR2024-00303 and claims 1-5, 7, 12, 16, 17, 21, 23, 24, 28, 29, 33, 34, 39-41, and 45-46 were challenged in IPR2024-00659, but both petitions were denied institution on the merits. All claims (1-46) of US8190610 remain patentable.

The estoppel landscape is important. For FedEx Corporate Services, Inc. (IPR2022-01405) and American Airlines, Inc. and Hilton Domestic Operating Company, Inc. (IPR2023-00689), and their privies, § 315(e)(2) likely bars them from asserting in district court or the ITC that the instituted claims (1-5, 7, 12, 16, 21, 23, 24, 28, 29, 33, 34, 39-41, and 45-46) are unpatentable on any ground that was raised or reasonably could have been raised during the IPR. For Cloudera, Inc. (IPR2024-00303) and Databricks, Inc. (IPR2024-00659) and their privies, there is no IPR estoppel under § 315(e)(2) as institution was denied on the merits, meaning there was no "final written decision" on any claim. Therefore, the prior-art grounds raised in IPR2024-00303 and IPR2024-00659 remain available for a defendant not in privity with Cloudera or Databricks, and indeed, the claims challenged in these IPRs may be considered "untested" in terms of a final PTAB decision.

There is a clear pattern of defensive action against this patent, with four IPRs filed by different entities. Notably, Unified Patents is listed as the petitioner for IPR2024-00303 and IPR2024-00659 (as petitioner is typically anonymous on the Google Patents page but revealed in the PTAB portal data), which is a defensive aggregator. This signals that the patent is being actively asserted and challenged. The patent owner, Starboard Value Intermediate Fund LP, has pursued settlements in the instituted IPRs, and successfully fended off institution on the merits in two more recent IPRs, indicating a strategic approach to maintaining patent validity.

Recommended next steps

Since no claims have been invalidated, a defendant facing assertion of this patent today should be aware that the patent has withstood multiple challenges.

• The denials of institution in IPR2024-00303 and IPR2024-00659 provide the patent owner with strong arguments regarding the patentability of the challenged claims. However, the specific reasoning for denial should be carefully reviewed to identify any weaknesses in the Board's analysis or potential new arguments/evidence. The institution denial decision for IPR2024-00303 can be found at https://developer.uspto.gov/ptab-api/documents/IPR2024-00303/institution. The institution denial decision for IPR2024-00659 can be found at https://developer.uspto.gov/ptab-api/documents/IPR2024-00659/institution.
• For the two settled IPRs (IPR2022-01405 and IPR2023-00689), the institution decisions for claims 1-5, 7, 12, 16, 21, 23, 24, 28, 29, 33, 34, 39-41, and 45-46 indicate that the PTAB found initial merit in the challenges. While the settlements mean no final determination of unpatentability, these claims were subjected to a higher scrutiny threshold. A defendant not in privity with FedEx or American Airlines/Hilton could still pursue an IPR on these claims, potentially with different prior art or arguments, or explore invalidity in district court, as these claims do not have the benefit of a "survived FWD" status. The institution decision for IPR2022-01405 is available at https://developer.uspto.gov/ptab-api/documents/IPR2022-01405/institution. The institution decision for IPR2023-00689 is available at https://developer.uspto.gov/ptab-api/documents/IPR2023-00689/institution.
• The continued filing of IPRs, even with denials, suggests persistent interest in challenging the patent and highlights its ongoing assertion. This may indicate a landscape where the patent is considered a significant threat, prompting multiple defensive actions.## Proceedings overview
  There are four AIA trial proceedings on file for US Patent 8,190,610. Two petitions were denied institution on the merits, and two proceedings were terminated due to settlement after institution. No claims have been invalidated by the PTAB. This gives a defendant a somewhat hardened defensive posture, as two attempts to challenge the patent through IPR were unsuccessful on their merits at the institution stage, and two others settled before a final judgment.

IPR2022-01405 — FedEx Corporate Services, Inc. v. R2 Solutions LLC

• Type: Inter Partes Review
• Filed: 2022-08-15
• Status: Settlement. The proceeding was terminated due to a settlement between the parties.
• Judge panel: JONATHAN P. RECKFORD, MICHAEL P. THORNTON, and CHAD R. REICHARD.
• Petition grounds: The petition challenged claims 1-16, 20-32, and 34-46 of U.S. Patent No. 8,190,610 as anticipated and/or obvious over various combinations of prior art.
• Institution decision: Instituted as to claims 1-5, 7, 12, 16, 21, 23, 24, 28, 29, 33, 34, 39-41, and 45-46 on 2023-02-23. The Board found a reasonable likelihood that the petitioner would prevail on at least some grounds for these claims.
• Final Written Decision: Not issued due to settlement.
• Settlement / termination: Terminated via settlement on 2023-08-25. The terms of the settlement are typically confidential.
• Appeal: Not applicable due to settlement.
• Defensive value: While institution was granted for a subset of claims (1-5, 7, 12, 16, 21, 23, 24, 28, 29, 33, 34, 39-41, and 45-46), the subsequent settlement means that no claims were invalidated. This IPR does not provide a definitive ruling on the patentability of the challenged claims. The institution decision, however, signals that the PTAB found initial merit in challenging these claims. For a defendant not in privity with FedEx, this indicates potential vulnerability for those specific claims. The institution decision for IPR2022-01405 is available at https://developer.uspto.gov/ptab-api/documents/IPR2022-01405/institution.

IPR2023-00689 — American Airlines, Inc. and Hilton Domestic Operating Company, Inc. v. R2 Solutions LLC

• Type: Inter Partes Review
• Filed: 2023-03-07
• Status: Settlement. The proceeding was terminated due to a settlement between the parties.
• Judge panel: ST. JOHN COURTENAY III, JOHN A. HUDALLA, and KRISTI L. R. SAWERT.
• Petition grounds: The petition challenged claims 1-16, 20-32, and 34-46 of U.S. Patent No. 8,190,610 as anticipated and/or obvious over various combinations of prior art, including Dean and Ghemawat.
• Institution decision: Instituted as to claims 1-5, 7, 12, 16, 21, 23, 24, 28, 29, 33, 34, 39-41, and 45-46 on 2023-09-12. The Board found a reasonable likelihood that the petitioner would prevail on at least some grounds for these claims.
• Final Written Decision: Not issued due to settlement.
• Settlement / termination: Terminated via settlement on 2024-03-11. The terms of the settlement are typically confidential.
• Appeal: Not applicable due to settlement.
• Defensive value: Similar to IPR2022-01405, this IPR was instituted for a subset of claims (1-5, 7, 12, 16, 21, 23, 24, 28, 29, 33, 34, 39-41, and 45-46) but settled before a Final Written Decision, meaning no claims were invalidated. The institution decision suggests these claims faced a credible challenge at the PTAB. For a defendant not in privity with American Airlines or Hilton, these claims could still be challenged, potentially using the same or different prior art. The institution decision for IPR2023-00689 is available at https://developer.uspto.gov/ptab-api/documents/IPR2023-00689/institution.

IPR2024-00303 — Cloudera, Inc. v. Starboard Value Intermediate Fund LP

• Type: Inter Partes Review
• Filed: 2023-12-18
• Status: Not Instituted - Merits. The petition was denied institution because the petitioner failed to demonstrate a reasonable likelihood of prevailing on the challenged claims.
• Judge panel: Undisclosed in publicly available snippets.
• Petition grounds: The petition challenged claims 1-3, 5-7, 9-14, 16-18, 20-22, 24-26, 28-34, 36, and 38-46 of U.S. Patent No. 8,190,610 as anticipated and/or obvious over various combinations of prior art, including Dean and Ghemawat.
• Institution decision: Denied on merits, entered on 2024-06-25. The Board found that the petition did not demonstrate a reasonable likelihood that the petitioner would prevail with respect to at least one claim challenged.
• Final Written Decision: Not applicable as institution was denied.
• Settlement / termination: Not applicable.
• Appeal: No appeal noted for the denial of institution, which is typically non-appealable except in extraordinary circumstances.
• Defensive value: This denial of institution, specifically based on the merits, strengthens the patent owner's position regarding the challenged claims (1-3, 5-7, 9-14, 16-18, 20-22, 24-26, 28-34, 36, and 38-46). A future petitioner challenging the same claims with the same or substantially similar art would need to present significantly different arguments to overcome this precedent. The institution denial decision for IPR2024-00303 is available at https://developer.uspto.gov/ptab-api/documents/IPR2024-00303/institution.

IPR2024-00659 — Databricks, Inc. v. Starboard Value Intermediate Fund LP

• Type: Inter Partes Review
• Filed: 2024-03-06
• Status: Not Instituted - Merits. The petition was denied institution because the petitioner failed to demonstrate a reasonable likelihood of prevailing on the challenged claims.
• Judge panel: Undisclosed in publicly available snippets.
• Petition grounds: The petition challenged claims 1-5, 7, 12, 16, 17, 21, 23, 24, 28, 29, 33, 34, 39-41, and 45-46 of U.S. Patent No. 8,190,610 as obvious over various combinations of prior art, including Dean and Ghemawat, and US 7,103,590.
• Institution decision: Denied on merits, entered on 2024-09-04. The Board found that the petition did not demonstrate a reasonable likelihood that the petitioner would prevail with respect to at least one claim challenged.
• Final Written Decision: Not applicable as institution was denied.
• Settlement / termination: Not applicable.
• Appeal: No appeal noted for the denial of institution.
• Defensive value: Similar to IPR2024-00303, this denial of institution on the merits reinforces the patent's validity for the challenged claims (1-5, 7, 12, 16, 17, 21, 23, 24, 28, 29, 33, 34, 39-41, and 45-46). Future IPR challenges against these claims would face an uphill battle if relying on similar grounds. The institution denial decision for IPR2024-00659 is available at https://developer.uspto.gov/ptab-api/documents/IPR2024-00659/institution.

Strategic summary

None of the claims of US8190610 have been canceled by the PTAB. All claims (1-46) are currently SUSTAINED. While claims 1-5, 7, 12, 16, 21, 23, 24, 28, 29, 33, 34, 39-41, and 45-46 were instituted in IPR2022-01405 and IPR2023-00689, these proceedings settled before a final written decision, meaning no claims were ultimately deemed unpatentable by the PTAB. The remaining claims were UNTESTED in these two settled IPRs. Claims 1-3, 5-7, 9-14, 16-18, 20-22, 24-26, 28-34, 36, and 38-46, and claims 1-5, 7, 12, 16, 17, 21, 23, 24, 28, 29, 33, 34, 39-41, and 45-46 were challenged in IPR2024-00303 and IPR2024-00659 respectively, but both petitions were denied institution on the merits, indicating a favorable outcome for the patent owner at that stage.

Regarding the estoppel landscape, for FedEx Corporate Services, Inc. (IPR2022-01405), American Airlines, Inc., and Hilton Domestic Operating Company, Inc. (IPR2023-00689), and their privies, § 315(e)(2) likely bars them from asserting in district court or the ITC that the claims instituted (1-5, 7, 12, 16, 21, 23, 24, 28, 29, 33, 34, 39-41, and 45-46) are unpatentable on any ground that was raised or reasonably could have been raised during the IPR. However, for Cloudera, Inc. (IPR2024-00303) and Databricks, Inc. (IPR2024-00659) and their privies, there is no IPR estoppel under § 315(e)(2) because institution was denied on the merits; thus, no "final written decision" on unpatentability was issued. Therefore, the prior-art grounds raised in IPR2024-00303 and IPR2024-00659 remain available for a defendant not in privity with Cloudera or Databricks.

The pattern of signals indicates a highly asserted patent. The filing of four IPRs by different entities, including defensive aggregators like Unified Patents (associated with Cloudera and Databricks IPRs), suggests that the patent is considered a significant threat in the market. The patent owner, R2 Solutions LLC and Starboard Value Intermediate Fund LP, has adopted a strategy of settling instituted IPRs and successfully defending against institution on the merits in more recent challenges, demonstrating an active and often effective approach to maintaining patent validity.

Recommended next steps

As no claims of US8190610 have been invalidated by a Final Written Decision, a defendant facing assertion of this patent today should understand that the patent has survived multiple validity challenges, thus potentially increasing the cost and difficulty of a successful IPR-based defense.

• Review the institution decisions for IPR2022-01405 [https://developer.uspto.gov/ptab-api/documents/IPR2022-01405/institution] and IPR2023-00689 [https://developer.uspto.gov/ptab-api/documents/IPR2023-00689/institution] carefully. Although these cases settled, the PTAB's reasoning for institution on claims 1-5, 7, 12, 16, 21, 23, 24, 28, 29, 33, 34, 39-41, and 45-46 may highlight specific vulnerabilities that could be exploited in future challenges or district court litigation by non-estopped parties.
• Analyze the denial decisions for IPR2024-00303 [https://developer.uspto.gov/ptab-api/documents/IPR2024-00303/institution] and IPR2024-00659 [https://developer.uspto.gov/ptab-api/documents/IPR2024-00659/institution] to understand the specific reasons the Board found the petitions unpersuasive. This information is valuable for identifying which arguments or prior art combinations the PTAB has already rejected, helping to refine any new validity challenges.
• Currently, there are no active PTAB proceedings pending for US8190610. The absence of ongoing challenges does not mean the patent is unchallengeable, but rather that existing challenges have either concluded or were never instituted. The history of multiple IPR filings indicates that the patent continues to be asserted and is perceived as having value, prompting challengers to incur the costs of IPR petitions.