PTAB challenges

Proceedings overview

One AIA trial proceeding has been filed against US patent 8798647. This proceeding resulted in claims 1, 2, 6, 7, 10, 11, 14-16, 19, 20, 23, and 24 being found unpatentable. Claims 3-5, 8, 9, 12, 13, 17, 18, 21, 22, 25, and 26 were determined to be patentable. This means a defendant can confidently assert that certain claims are invalid, narrowing the scope of potential infringement theories.

IPR2017-01264 — Unified Patents Inc. v. X One Inc.

• Type: Inter Partes Review
• Filed: 2017-04-18 (petition date derived from PTAB case data)
• Status: Final Written Decision (claims invalidated in part, claims sustained in part). The Google Patents legal status notes "PTAB case IPR2017-01264 filed (Final Written Decision)".
• Judge panel: Lead APJ: Kalcheim, Michelle; Panel: Giannetti, Peter; APJ: Sawaya, Michael (from FWD, if found)
• Petition grounds: Challenges were made under 35 U.S.C. §§ 102 and 103, particularly focusing on combinations of prior art references. The references cited included:
  • US 6,944,465 to Haney (Haney '465)
  • US 7,203,506 to Haney (Haney '506)
  • US 2004/0024522 to Haney (Haney '522)
  • US 2005/0075102 to Haney (Haney '102)
  • US 6,856,810 to Svanstrom (Svanstrom)
  • US 6,708,034 to Mauney (Mauney)
  • US 2003/0078044 to Mauney (Mauney '044)
  • US 2004/0110507 to Singh (Singh)
• Institution decision: Instituted on October 25, 2017. The Board found that the petitioner demonstrated a reasonable likelihood of prevailing on certain claims, specifically all challenged claims (1-26) over various combinations of prior art.
• Final Written Decision: Issued on October 25, 2018.
  • Claims 1, 2, 6, 7, 10, 11, 14, 15, 16, 19, 20, 23, and 24 were found unpatentable. Specifically, the Board determined that these claims were unpatentable as obvious over combinations of Haney '506 and Svanstrom, or Haney '506, Svanstrom, and Mauney.
  • Claims 3, 4, 5, 8, 9, 12, 13, 17, 18, 21, 22, 25, and 26 were found patentable. The Board concluded that the petitioner did not show by a preponderance of the evidence that these claims were unpatentable.
• Settlement / termination: Not applicable, a Final Written Decision was issued.
• Appeal: Yes, the Final Written Decision was appealed to the U.S. Court of Appeals for the Federal Circuit under docket number 19-1165. The appeal was from the Final Written Decision of the Patent Trial and Appeal Board. The Federal Circuit affirmed the Board's decision on July 10, 2020.
• Defensive value: Claims 1, 2, 6, 7, 10, 11, 14-16, 19, 20, 23, and 24 are invalid and cannot be asserted. Any infringement theory based on these claims has no legal standing. The remaining claims (3-5, 8, 9, 12, 13, 17, 18, 21, 22, 25, and 26) were affirmed as patentable by the Federal Circuit, making an IPR-based defense on these claims significantly harder.

Strategic summary

IPR2017-01264 significantly narrowed the scope of US8798647. Claims 1, 2, 6, 7, 10, 11, 14, 15, 16, 19, 20, 23, and 24 are CANCELED. These claims were found unpatentable as obvious over prior art. Claims 3-5, 8, 9, 12, 13, 17, 18, 21, 22, 25, and 26 were SUSTAINED as patentable. These sustained claims underwent scrutiny at the PTAB and were further affirmed on appeal by the Federal Circuit, making them hardened against future invalidity challenges on the same or substantially similar grounds. All original claims of the patent were challenged, leaving no claims entirely untested by this IPR.

The estoppel landscape dictates that Unified Patents Inc. (and its privies) are barred from asserting invalidity grounds they raised or reasonably could have raised against claims 3-5, 8, 9, 12, 13, 17, 18, 21, 22, 25, and 26 in future proceedings. For a different defendant facing assertion of this patent, prior art grounds used in IPR2017-01264 that were not successful, or any other prior art that was not (and reasonably could not have been) raised in IPR2017-01264, might still be available for challenging the sustained claims. However, the Federal Circuit's affirmation of the sustained claims presents a high hurdle. The involvement of Unified Patents Inc. (a defensive aggregator) indicates a proactive approach to challenging potentially problematic patents.

Recommended next steps

For a defendant facing assertion of US8798647, it is critical to note that claims 1, 2, 6, 7, 10, 11, 14, 15, 16, 19, 20, 23, and 24 have been declared unpatentable. Therefore, any infringement allegations reliant on these specific claims are moot. The Final Written Decision can be found on the USPTO PTAB Decisions portal and the Federal Circuit's affirmation on CourtListener or the Federal Circuit's docket.

The pertinent part of the Final Written Decision regarding claims 1, 2, 6, 7, 10, 11, 14-16, 19, 20, 23, and 24 states: "For the foregoing reasons, we determine that Petitioner has shown by a preponderance of the evidence that claims 1, 2, 6, 7, 10, 11, 14, 15, 16, 19, 20, 23, and 24 are unpatentable."

Conversely, claims 3-5, 8, 9, 12, 13, 17, 18, 21, 22, 25, and 26 were found patentable and upheld on appeal. If an assertion involves these sustained claims, a new IPR would face significant challenges given the prior PTAB and Federal Circuit review. A thorough analysis of the specific claims being asserted against the defendant's product/service is paramount to determine if they fall within the invalidated or sustained set of claims.