PTAB challenges

Proceedings overview

There are no AIA trial proceedings (Inter Partes Review, Post-Grant Review, or Covered Business Method) on file for US patent 8855723 as of the most recent USPTO Open Data Portal ingest and subsequent web searches.

However, an ex parte reexamination was requested and instituted against US8855723. On December 1, 2023, less than one month after Unified Patents LLC filed the request, the Central Reexamination Unit (CRU) granted the request, finding a substantial new question of patentability on all challenged claims of US Patent 8,855,723. The patent is owned and asserted by Stasit, LLC. This proceeding is distinct from an AIA trial but represents a significant challenge to the patent's validity.

The defensive posture for a defendant is that while the patent has not undergone AIA trials, its claims are currently under reexamination. This means that the validity of all challenged claims is being reviewed by the USPTO, which could lead to their cancellation or amendment.

Strategic summary

As of the current date, US patent 88555723 has not been subjected to any AIA trial proceedings (IPR, PGR, CBM). This means all claims are technically "UNTESTED" within the context of these specific trial types.

However, the patent is currently undergoing an ex parte reexamination initiated by Unified Patents LLC. This is a significant development because the Central Reexamination Unit found a "substantial new question of patentability on all challenged claims". While the specific claims challenged were not enumerated in the search results, the phrase "all challenged claims" suggests a broad reexamination. This process could lead to the cancellation or amendment of claims, which would effectively narrow the patent and impact its enforceability.

For a defendant currently facing assertion of this patent, the ongoing reexamination presents a potential opportunity. If the reexamination ultimately invalidates claims, it could significantly weaken the patent owner's case. The involvement of Unified Patents LLC, a defensive aggregator known for challenging patents, signals a concerted effort to invalidate the patent.

Recommended next steps

Given the institution of an ex parte reexamination, it is crucial to monitor the progress and outcome of this proceeding.

• Identify the Reexamination Number: The first step is to identify the specific reexamination number for US8855723. This number would allow direct access to the public docket via USPTO Patent Center or Public PAIR, providing detailed information about the challenged claims, prior art grounds, office actions, and responses.
• Track Reexamination Status: Closely follow the reexamination process. The CRU's finding of a "substantial new question of patentability" on "all challenged claims" indicates that the patent's validity is in question.
• Review Office Actions and Patent Owner Responses: Once the reexamination number is known, obtain and analyze all Office Actions issued by the examiner and the Patent Owner's responses. This will reveal the specific prior art being applied, the examiner's rejections, and the Patent Owner's arguments for patentability, including any claim amendments.
• Anticipate Potential Outcomes: The reexamination could result in claims being confirmed, amended, or canceled. A final decision cancelling claims, or a certificate confirming patentability over new prior art, would directly impact any ongoing or future litigation.
• Leverage Reexamination Findings: If claims are rejected or canceled during reexamination, a defendant can use these findings to bolster their invalidity arguments in district court litigation or to negotiate a more favorable settlement.
• Consider Intervention (if applicable): While ex parte reexamination does not allow third-party participation beyond the initial request, understanding the process is critical. If the reexamination leads to significant claim changes or cancellations, it could influence strategic decisions regarding other potential challenges or litigation defenses.