PTAB challenges

Proceedings overview

There is one AIA trial proceeding on file for US patent 8784113. This Inter Partes Review (IPR) proceeding resulted in the PTAB's initial finding that the challenged claims were not proven unpatentable, but this decision was subsequently vacated by the Federal Circuit. This gives a defendant a mixed defensive posture; while the claims were initially sustained by the PTAB, the Federal Circuit's vacatur reopens the question of their patentability.

IPR2022-01439 — Unified Patents v. Go1 Pty, Ltd.

• Type: Inter Partes Review
• Filed: The IPR case was filed on an unspecified date in 2022.
• Status: Vacated by Federal Circuit. The PTAB initially found that Go1 Pty, Ltd. failed to prove the challenged claims unpatentable, but the Federal Circuit vacated this decision on May 28, 2026.
• Judge panel: Information about the specific judge panel for IPR2022-01439 is not publicly available in the provided snippets. However, James A. Tartal is listed as a PTAB Judge associated with Unified Patents cases in general.
• Petition grounds: The petition challenged claims of US Patent No. 8,784,113 as unpatentable based on obviousness, specifically regarding "expert testimony on step sequencing."
• Institution decision: Details of the institution decision (e.g., date, full reasoning) are not available in the provided information. However, IPR was instituted since a Final Written Decision was issued.
• Final Written Decision (if issued): The PTAB issued a Final Written Decision finding that Go1 Pty, Ltd. failed to prove the challenged claims of US Patent No. 8,784,113 unpatentable.
• Settlement / termination: No information regarding settlement or termination is provided.
• Appeal: Yes, the FWD was appealed to the Court of Appeals for the Federal Circuit under case number 24-1762. The Federal Circuit vacated the PTAB's decision on May 28, 2026, finding that the Board's conclusion regarding conclusory expert testimony on step sequencing was not supported by substantial evidence.
• Defensive value: The Federal Circuit's vacatur means that the PTAB's initial finding of patentability for the challenged claims is no longer definitive. This reopens the door for a defendant to challenge the patentability of these claims, potentially leveraging the Federal Circuit's reasoning regarding expert testimony on step sequencing.

Strategic summary

Currently, the status of claims from US8784113 is in flux due to the Federal Circuit's vacatur of the PTAB's Final Written Decision in IPR2022-01439. While the PTAB initially sustained the challenged claims by finding them not unpatentable, this decision has been overturned on appeal. This means no claims have been definitively canceled by the PTAB in this proceeding, nor have they been conclusively sustained against the obviousness challenge raised. The specific claims challenged in IPR2022-01439 are not enumerated in the provided text. All claims of the patent, therefore, remain "untested" by a finalized PTAB decision.

The estoppel landscape is complex due to the Federal Circuit's vacatur. Generally, 35 U.S.C. § 315(e)(2) bars petitioners and their privies from raising any ground they raised or reasonably could have raised in a proceeding that results in a final written decision. However, with the Federal Circuit vacating the PTAB's decision, it is unclear if statutory estoppel would apply, as there is no longer a "final written decision" affirming the patentability of the claims. This could potentially leave the prior-art grounds raised by Unified Patents available for future challenges, either by Unified Patents (or its privies) in a new proceeding or by other defendants in district court litigation. Unified Patents is known as a defensive aggregator that aims to deter Non-Practicing Entities (NPEs) and protect against "frivolous patent litigation."

Recommended next steps

Given the Federal Circuit's vacatur of the PTAB's Final Written Decision in IPR2022-01439, a defendant facing assertion of this patent should closely monitor the remanded proceedings at the PTAB. The original PTAB decision (which is now vacated) found that Go1 Pty, Ltd. failed to prove the challenged claims unpatentable, but the Federal Circuit explicitly stated that the Board's finding regarding conclusory expert testimony on step sequencing was not supported by substantial evidence. This indicates a potential weakness in the patent owner's previous arguments or evidence presented to the PTAB.

A defendant should investigate the specific claims challenged in IPR2022-01439 to understand the grounds of obviousness raised and the details of the expert testimony that the Federal Circuit found problematic. This could provide a roadmap for future invalidity arguments. The absence of a finalized PTAB decision upholding the patentability of these claims means they are not "hardened" against prior art challenges in the same way claims surviving a Federal Circuit-affirmed FWD would be.