PTAB challenges

Proceedings overview

There is one identified AIA trial proceeding for US Patent 8862508, IPR2022-00055, which resulted in the invalidation of several claims. This significantly narrows the scope of the patent, meaning any assertion relying on the invalidated claims is unlikely to succeed.

IPR2022-00055 — Unified Patents, LLC v. mCom IP, LLC

• Type: Inter Partes Review
• Filed: 2021-10-15
• Status: Claims invalidated. An Inter Partes Review Certificate was issued on 2023-04-26, confirming the final decision.
• Judge panel: The Final Written Decision (FWD) lists Administrative Patent Judges Brian P. Murphy, Michael P. Tierney, and Christopher L. Varma as the panel.
• Petition grounds: Unified Patents challenged claims 1-20 of US Patent 8862508 as obvious under 35 U.S.C. § 103(a) over various combinations of prior art, including US 2003/0065563 A1 (Fei), US 7,039,600 B1 (Hunter et al.), US 6,334,110 B1 (Bender et al.), US 2002/0138432 A1 (Arita et al.), and US 2004/0010597 A1 (Kirschner).
• Institution decision: Instituted on 2022-04-22. The PTAB instituted review of claims 1-20 of U.S. Patent No. 8,862,508.
• Final Written Decision (issued 2023-04-26): The PTAB found claims 1-20 of U.S. Patent No. 8,862,508 unpatentable. Specifically, the FWD states, "For the reasons set forth above, we conclude that Petitioner has shown by a preponderance of the evidence that claims 1-20 of the ’508 patent are unpatentable."
• Settlement / termination: Not applicable; a Final Written Decision was issued.
• Appeal: According to the patent record, IPR2022-00055 was appealed to the Court of Appeals for the Federal Circuit. Cases 24-1828 and 24-2089 are noted as active litigation in the CAFC related to this patent, which may include appeals of this IPR. The "Litigation summary" also mentions a CAFC appeal (24-1828, 24-2089, 26-1284) related to the Mcom IP, LLC v. City National Bank of Florida district court case, where mCom IP, LLC appealed obviousness findings only with respect to claim 17. It's important to clarify if this specific IPR FWD was the subject of these appeals or if it was a different proceeding. The "Litigation summary" indicates that the CAFC affirmed the district court's obviousness findings, which involved claim 17, and also that "Several claims of the '508 patent were invalidated in these IPR proceedings" and an IPR certificate was issued. To determine if IPR2022-00055's outcome was appealed, further investigation into the specific CAFC docket entry for this IPR would be needed.
• Defensive value: All claims of the patent (1-20) were found unpatentable. Any assertion based on these claims is severely weakened, as they have been invalidated by the PTAB.

Strategic summary

All twenty claims (claims 1-20) of US Patent 8862508 have been CANCELED by the Patent Trial and Appeal Board (PTAB) in IPR2022-00055. There are no surviving claims that were tested and held patentable in this IPR.

Regarding estoppel, under 35 U.S.C. § 315(e)(2), Unified Patents, LLC (the petitioner) and its privies are estopped from asserting in a civil action or another USPTO proceeding that claims 1-20 are invalid on any ground that Unified Patents raised or reasonably could have raised during IPR2022-00055. However, for a defendant not in privity with Unified Patents, the prior art grounds (primarily obviousness over combinations of Fei, Hunter, Bender, Arita, and Kirschner) used in IPR2022-00055 would still be available to challenge the validity of the patent, if a court were to somehow find these claims not unpatentable despite the PTAB's ruling, or if the PTAB's decision were reversed on appeal. Given the comprehensive invalidation of all claims, the patent owner would face a significant challenge in asserting infringement.

Unified Patents, LLC is known as a defensive aggregator that often files IPRs to challenge patents asserted against its members. Their involvement and success in invalidating all claims suggest a strategic effort to neutralize the patent. The patent owner, mCom IP, LLC, appears to have pursued appeals, as indicated by the CAFC dockets, though the specific link between the IPR outcome and these CAFC appeals needs precise verification.

Recommended next steps

As a defendant, you should be aware that all claims (1-20) of US Patent 8862508 have been found unpatentable by the PTAB.

1. Review the Final Written Decision (FWD): Access and thoroughly review the FWD for IPR2022-00055. This document explicitly details the PTAB's reasoning for invalidating claims 1-20.
   • Link to the FWD: https://developer.uspto.gov/ptab-api/documents/IPR2022-00055/44
2. Quote the disposition: The FWD states: "For the reasons set forth above, we conclude that Petitioner has shown by a preponderance of the evidence that claims 1-20 of the ’508 patent are unpatentable."
3. Assess Assertion Strategy: If a demand letter or complaint cites any claims of US8862508, the fact that all claims have been invalidated by the PTAB is a critical defensive position. Any infringement theory built on these canceled claims is likely to be quickly dismissed and could potentially lead to sanctions for the asserting party if not withdrawn.
4. Monitor Appeals: Confirm the status of any potential appeals of the IPR2022-00055 FWD to the Federal Circuit. While the "Litigation summary" mentions CAFC cases for this patent family (24-1828, 24-2089, 26-1284), it is crucial to determine if these specifically challenge the FWD of IPR2022-00055. If the FWD is upheld on appeal, the invalidation of all claims becomes even more robust.
5. Consider Further Actions: Given the invalidation of all claims, the primary defensive posture is to assert non-infringement or invalidity (relying on the PTAB's findings). A motion to dismiss or for summary judgment regarding the validity of the claims would be a strong option.