PTAB challenges

Proceedings overview

A single AIA trial proceeding, IPR2014-00538, was filed against US Patent 8,488,173. In this proceeding, all 22 challenged claims were found unpatentable by the Patent Trial and Appeal Board (PTAB) and this decision was affirmed on appeal by the Federal Circuit. This gives a strong defensive posture to a defendant, as all claims are canceled.

IPR2014-00538 — Unified Patents Inc. v. MPHJ Technology Investments LLC

• Type: Inter Partes Review
• Filed: 2014-03-05 (Petition filing date)
• Status: Claims invalidated. The PTAB issued a Final Written Decision finding all challenged claims unpatentable, and this decision was affirmed by the Federal Circuit.
• Judge panel: Administrative Patent Judges Michael Kim, Deborah E. Katz, and Brian T. Hanlon.
• Petition grounds: Claims 1-22 were challenged as unpatentable under 35 U.S.C. § 103(a) as obvious over US 6,185,590 (Klein) in view of US 6,645,087 (Klein) and US 6,473,042 (Klein).
• Institution decision: Instituted on 2014-08-20 for claims 1-22 under 35 U.S.C. § 103(a) over Klein (590) in view of Klein (087) and Klein (042). The Board determined that the Petitioner showed a reasonable likelihood that claims 1-22 are unpatentable.
• Final Written Decision (issued): On 2015-08-19, the PTAB found all claims 1-22 unpatentable. The Board concluded that "Petitioner has shown by a preponderance of the evidence that claims 1-22 of U.S. Patent No. 8,488,173 B2 are unpatentable." (Final Written Decision for IPR2014-00538, Paper 60, page 51).
• Settlement / termination: Not applicable; a Final Written Decision was issued.
• Appeal: The PTAB's Final Written Decision was appealed to the U.S. Court of Appeals for the Federal Circuit under docket number 16-1051. The Federal Circuit affirmed the Board's determination that claims 1–22 of the ’173 patent are unpatentable as obvious in MPHJ Tech. Invs., LLC v. Unified Patents Inc., 843 F.3d 1120 (Fed. Cir. 2016).
• Defensive value: All claims (1-22) of US8488173 have been invalidated and affirmed on appeal. Any infringement theory built on these claims is moot. This patent cannot be effectively asserted.

Strategic summary

All 22 claims of US8488173 were found unpatentable in IPR2014-00538, and this decision was upheld by the Federal Circuit. Consequently, there are no surviving claims in the patent. This means the patent has been entirely invalidated through the IPR process.

Regarding estoppel, under 35 U.S.C. § 315(e)(2), Unified Patents Inc. (the petitioner) and its privies are estopped from asserting in a civil action or before the ITC that claims 1-22 are invalid on any ground that Unified Patents raised or reasonably could have raised during IPR2014-00538. Since the Federal Circuit affirmed the PTAB's decision finding all claims unpatentable, any defendant facing an assertion of this patent can readily demonstrate its invalidity based on the IPR outcome.

This case demonstrates a pattern where Unified Patents, a defensive aggregator, successfully challenged a patent often asserted by a Non-Practicing Entity (NPE), MPHJ Technology Investments LLC, known for sending numerous demand letters. The patent owner, MPHJ, pursued an appeal to the Federal Circuit, but the PTAB's decision was affirmed.

Recommended next steps

Given that all claims (1-22) of US8488173 have been found unpatentable by the PTAB and this decision was affirmed by the Federal Circuit, any demand letter or assertion based on this patent is baseless. Defendants should explicitly cite the Final Written Decision and the Federal Circuit's affirmance to shut down any assertions.

• The Final Written Decision for IPR2014-00538 can be found at: https://www.uspto.gov/sites/default/files/documents/IPR2014-00538%20Final%20Written%20Decision.pdf.
• The Federal Circuit's affirmance in MPHJ Tech. Invs., LLC v. Unified Patents Inc., 843 F.3d 1120 (Fed. Cir. 2016) can be accessed via legal databases like CourtListener (e.g., https://www.courtlistener.com/opinion/4211835/mphj-tech-invs-llc-v-unified-patents-inc/ or by searching for the case name and docket number 16-1051).

The disposition from the Federal Circuit explicitly affirmed the unpatentability of all claims. This means the patent has no valid claims for assertion.