PTAB challenges

The USPTO Open Data Portal (ODP) API does not list any AIA trial proceedings for US patent 8,700,996 as of its most recent ingest. However, a review of the patent's litigation history and web searches reveals that the patent has been the subject of inter partes review (IPR) proceedings at the Patent Trial and Appeal Board (PTAB) and an ex parte reexamination. This contradicts the "PTAB proceedings on file" block which stated no AIA trial proceedings were returned by the ODP API.

Proceedings overview

There have been three PTAB-related proceedings concerning US8700996: two inter partes reviews (IPRs) and one ex parte reexamination. One IPR (IPR2016-01086) resulted in an adverse judgment, leading Corel to cancel all then-asserted claims. Another IPR (IPR2016-01085) was not instituted. An ex parte reexamination (90014266) also rejected the two claims that were in reexamination. This significantly weakens the patent, leaving a defendant in a strong defensive posture as the primary claims appear to have been cancelled or rejected.

IPR2016-01086 — Microsoft Corporation v. Corel Software, LLC

• Type: Inter Partes Review
• Filed: 2016-05-24
• Status: Adverse Judgment — Corel Software, LLC cancelled all asserted claims.
• Judge panel: Undisclosed in public snippets.
• Petition grounds: Specific claims and prior art challenged are not detailed in the available snippets, but the petition challenged the validity of US8700996.
• Institution decision: The PTAB instituted an inter partes review.
• Final Written Decision (if issued): An adverse judgment was entered against Corel Software, LLC, as the patent owner filed a statutory disclaimer and cancelled all asserted claims of US8700996 that were then under review. This effectively invalidated the claims challenged in this IPR.
• Settlement / termination: Terminated by adverse judgment due to claim cancellation.
• Appeal: Not applicable, as claims were cancelled by the patent owner.
• Defensive value: This proceeding resulted in the cancellation of all claims that were asserted and under review at the time. Any infringement theory based on these claims is no longer viable. This significantly diminishes the strength of the patent.

IPR2016-01085 — Microsoft Corporation v. Corel Software, LLC

• Type: Inter Partes Review
• Filed: 2016-05-24
• Status: Not Instituted - Merits.
• Judge panel: Undisclosed in public snippets.
• Petition grounds: Specific claims and prior art challenged are not detailed in the available snippets, but the petition challenged the validity of US8700996.
• Institution decision: Institution was denied on the merits. The PTAB did not find a reasonable likelihood that the petitioner would prevail on at least one claim challenged.
• Final Written Decision (if issued): No Final Written Decision was issued as institution was denied.
• Settlement / termination: Terminated by denial of institution.
• Appeal: Not applicable.
• Defensive value: This IPR did not result in any claims being invalidated. However, its denial of institution on the merits suggests the PTAB found the petition grounds unconvincing, potentially making future IPR challenges on the same grounds more difficult.

Ex Parte Reexamination Application 90014266

• Type: Ex Parte Reexamination
• Filed: 2019-02 (exact date not specified in snippets, only month/year).
• Status: Pending - Appeal (as of June 2019, according to snippets).
• Judge panel: Not applicable for ex parte reexamination; handled by a PTO Examiner.
• Petition grounds: Not explicitly stated beyond "reexamination for the '996 patent".
• Institution decision: Instituted (implied by the issuance of an office action).
• Final Written Decision (if issued): Not a "Final Written Decision" in the PTAB sense, but a PTO examiner issued a first office action rejecting the two claims of the '996 patent that were in reexamination on 2019-06-28.
• Settlement / termination: Still pending appeal as of the last update in the provided text.
• Appeal: The status "Pending - Appeal" indicates an appeal to the PTAB (and potentially Federal Circuit after that) was initiated following the examiner's rejection.
• Defensive value: The rejection of claims in ex parte reexamination further weakens the patent. If these rejections are upheld on appeal, these claims will be unassertable.

Strategic summary

Based on the available information, the '996 patent has undergone significant challenges. IPR2016-01086 resulted in the cancellation of all asserted claims by the patent owner via statutory disclaimer, effectively invalidating them. While IPR2016-01085 was not instituted, the subsequent ex parte reexamination (Application 90014266) saw an examiner reject two claims of the patent. The status of these rejections on appeal is "Pending - Appeal" as of June 2019.

The cumulative effect of these proceedings suggests that a substantial portion, if not all, of the originally asserted claims of US8700996 have been cancelled or are facing invalidation. The strategic landscape for a defendant is highly favorable. Claims subjected to IPR2016-01086 are explicitly cancelled, meaning they cannot be asserted. The specific claims rejected in the ex parte reexamination are also in jeopardy and, if the rejection is affirmed, would be unassertable. Without knowing precisely which claims were asserted in IPR2016-01086, it is difficult to list the exact surviving claims, but the "adverse judgment" implies the crucial claims were eliminated.

Estoppel under § 315(e)(2) would apply to Microsoft Corporation (and its privies) for any grounds that were raised or reasonably could have been raised in IPR2016-01086 for the claims subject to the adverse judgment. However, given the patent owner's cancellation of claims, the direct impact of estoppel is less critical than the claims themselves being removed. For other potential defendants, prior art grounds remain available for any claims not formally cancelled or rejected. The pattern signals indicate aggressive defensive action by Microsoft against this patent family.

Recommended next steps

• For claims asserted in IPR2016-01086: Confirm the specific claims that were cancelled via statutory disclaimer as a result of IPR2016-01086. These claims are no longer assertable. Refer to the PTAB record for IPR2016-01086 on the USPTO website to verify the exact claims and the adverse judgment.
  • Unified Patents PTAB Data: IPR2016-01086
• For claims in Ex Parte Reexamination Application 90014266: Investigate the current status of the appeal for the ex parte reexamination (Application 90014266) to determine if the examiner's rejections of the two claims have been upheld or reversed. This will clarify the enforceability of those specific claims. This information would typically be available through Public PAIR on the USPTO website.
• Comprehensive Claim Analysis: Perform a detailed claim chart analysis against the surviving claims (if any) to confirm that any remaining claims are not subject to the prior art grounds that led to the earlier cancellations and rejections.
• Monitor for new assertions: Given the history, any new assertion of this patent should be carefully scrutinized to ensure it is based on valid, surviving claims, and to understand the specific claims being asserted.