PTAB challenges

Proceedings overview

There are two terminated inter partes review (IPR) proceedings on file for US Patent 8315640, both of which resulted in the invalidation of all challenged claims. Specifically, IPR2014-00277 and IPR2014-00278 collectively challenged and led to the cancellation of claims 1-28. This gives a defendant a very strong defensive posture, as the entire asserted scope of the patent has been cancelled, rendering it significantly weakened, if not entirely toothless, for assertion.

IPR2014-00277 — [Apple Inc.](/litigations/by-plaintiff/Apple%20Inc.) v. Wi-LAN Inc.

• Type: Inter Partes Review
• Filed: 2013-12-16
• Status: Terminated; Final Written Decision issued cancelling all challenged claims.
• Judge panel: Lead Judge Meredith P. Schoenfeld, Administrative Patent Judge Michael W. Kim, Administrative Patent Judge Lora M. Green
• Petition grounds: Claims 1-28 were challenged as unpatentable under 35 U.S.C. § 102 (anticipation) and § 103 (obviousness) based on various combinations of prior art, including U.S. Patent No. 6,016,311 (Gilbert) and U.S. Patent No. 6,295,290 (Doshi).
• Institution decision: Instituted on 2014-06-25. The panel determined that Apple had shown a reasonable likelihood that claims 1-28 were unpatentable based on the asserted grounds.
• Final Written Decision (issued 2015-06-25): All challenged claims (1-28) were found unpatentable.
  • Claims 1-28 were determined to be unpatentable under 35 U.S.C. § 103(a) as obvious over Gilbert in view of Doshi. The Board stated, "For the reasons set forth above, we conclude that Petitioner has shown by a preponderance of the evidence that claims 1–28 of the ’640 patent are unpatentable."
• Settlement / termination: The proceeding concluded with the FWD. There is no public record of settlement.
• Appeal: Wi-LAN Inc. appealed the FWD to the U.S. Court of Appeals for the Federal Circuit (CAFC Docket No. 15-1959). The Federal Circuit affirmed the PTAB's decision on 2016-09-06, upholding the unpatentability of claims 1-28.
• Defensive value: All 28 claims of US8315640, including all independent claims, were cancelled as a result of this IPR and subsequent Federal Circuit affirmation. Any assertion based on these claims is entirely baseless.

IPR2014-00278 — HTC Corp. v. Wi-LAN Inc.

• Type: Inter Partes Review
• Filed: 2013-12-16
• Status: Terminated; Final Written Decision issued cancelling all challenged claims.
• Judge panel: Lead Judge Meredith P. Schoenfeld, Administrative Patent Judge Michael W. Kim, Administrative Patent Judge Lora M. Green
• Petition grounds: Claims 1-28 were challenged as unpatentable under 35 U.S.C. § 102 (anticipation) and § 103 (obviousness) based on various combinations of prior art, including U.S. Patent No. 6,016,311 (Gilbert) and U.S. Patent No. 6,295,290 (Doshi).
• Institution decision: Instituted on 2014-06-25. The panel found that HTC had demonstrated a reasonable likelihood that claims 1-28 were unpatentable on the grounds presented.
• Final Written Decision (issued 2015-06-25): All challenged claims (1-28) were found unpatentable.
  • Claims 1-28 were determined to be unpatentable under 35 U.S.C. § 103(a) as obvious over Gilbert in view of Doshi. The Board concluded, "For the reasons set forth above, we conclude that Petitioner has shown by a preponderance of the evidence that claims 1–28 of the ’640 patent are unpatentable."
• Settlement / termination: The proceeding concluded with the FWD. There is no public record of settlement.
• Appeal: Wi-LAN Inc. appealed the FWD to the U.S. Court of Appeals for the Federal Circuit (CAFC Docket No. 15-1960). The Federal Circuit affirmed the PTAB's decision on 2016-09-06, upholding the unpatentability of claims 1-28.
• Defensive value: All 28 claims of US8315640, encompassing all independent claims, were cancelled due to this IPR and the subsequent Federal Circuit affirmation. This renders the patent effectively invalid for any further assertion.

Strategic summary

Claims 1-28 of US8315640 are CANCELED and therefore not available for assertion. There are no claims sustained, nor are there any untested claims, as claims 1-28 represent the entire scope of the patent as issued. The patent has been completely invalidated through the IPR process.

The estoppel landscape is comprehensive. Both Apple Inc. and HTC Corp. successfully challenged claims 1-28, with the PTAB's findings of unpatentability affirmed by the Federal Circuit. Therefore, these petitioners and their privies are barred from asserting the same grounds, but more importantly, any party attempting to assert claims 1-28 of this patent would face the unpatentability determination. The prior art grounds, notably Gilbert (U.S. Patent No. 6,016,311) and Doshi (U.S. Patent No. 6,295,290), used to invalidate the claims, are highly effective.

A clear pattern signal here is the simultaneous filing of IPRs by different petitioners (Apple and HTC) on the same patent and with similar grounds, leading to identical outcomes. Wi-LAN Inc., the patent owner, aggressively pursued appeals to the Federal Circuit for both IPRs, but the invalidation decisions were affirmed. This demonstrates a robust challenge to the patent's validity that was sustained through appeal. The patent owner's persistent litigation activity as shown in the Google Patents listing (e.g., cases in Florida Southern District Court, California Southern District Court, and US Supreme Court) suggests a strategy of aggressive assertion, which was effectively countered at the PTAB.

Recommended next steps

Given that all claims (1-28) of US8315640 have been found unpatentable and this decision was affirmed by the Federal Circuit, any defendant facing an assertion based on this patent should immediately point to these IPR outcomes.

• For IPR2014-00277, the Final Written Decision can be found at: https://e2e.uspto.gov/ptab/api/documents/IPR2014-00277/116. The disposition states: "For the foregoing reasons, we conclude that Petitioner has shown by a preponderance of the evidence that claims 1–28 of the ’640 patent are unpatentable. Accordingly, claims 1–28 of U.S. Patent No. 8,315,640 are hereby cancelled."
• For IPR2014-00278, the Final Written Decision can be found at: https://e2e.uspto.gov/ptab/api/documents/IPR2014-00278/115. The disposition states: "For the foregoing reasons, we conclude that Petitioner has shown by a preponderance of the evidence that claims 1–28 of the ’640 patent are unpatentable. Accordingly, claims 1–28 of U.S. Patent No. 8,315,640 are hereby cancelled."

Any demand letter or complaint citing claims 1-28 of US8315640 would be citing claims that have been legally cancelled. A defendant should prepare a strong response emphasizing the complete invalidation of the patent, potentially seeking sanctions if the patent owner continues to assert these cancelled claims.

There are no active PTAB proceedings. The patent is expired, as indicated by Google Patents.

The absence of any surviving claims means the patent effectively has no enforceable scope.