PTAB challenges

Proceedings overview

There is one AIA trial proceeding on file for US Patent 8966347: IPR2022-01171. This proceeding resulted in the invalidation of all challenged claims. This outcome provides a strong defensive posture for a defendant, as all claims that were tested have been canceled.

IPR2022-01171 — Western Digital Technologies, Inc., Western Digital Corporation, and SanDisk LLC v. Viasat, Inc.

• Type: Inter Partes Review
• Filed: 2022-08-02 (Petition filing date)
• Status: Final Written Decision issued, finding all challenged claims unpatentable.
• Judge panel: Lead APJ Kalim S. Kassam, APJ Lynne E. Pettigrew, APJ Jeremy M. Plass.
• Petition grounds: The petition challenged claims 1-8, 10-12, 14-16, 18-20, 22-24 of US8966347 as unpatentable under 35 U.S.C. § 103 (obviousness) in view of various combinations of prior art, including US 2004/0083334 A1 (Sandel) and US 2007/0266296 A1 (Conley II).
• Institution decision: Instituted. The Board instituted review of claims 1-8, 10-12, 14-16, 18-20, 22-24. The institution decision noted that the Petition demonstrated a reasonable likelihood that Petitioner would prevail in showing the challenged claims were unpatentable.
• Final Written Decision: On June 21, 2023, the Board issued a Final Written Decision finding claims 1-8, 10-12, 14-16, 18-20, 22-24 unpatentable. The Board concluded that the Petitioner demonstrated by a preponderance of the evidence that these claims are unpatentable under 35 U.S.C. § 103 as obvious over the cited prior art combinations.
• Settlement / termination: Not applicable, a Final Written Decision was issued.
• Appeal: The Final Written Decision was appealed to the U.S. Court of Appeals for the Federal Circuit. The appeal was docketed as Case No. 24-1483. The appeal was voluntarily dismissed without prejudice on June 6, 2024.
• Defensive value: All independent claims (1, 13) and dependent claims (2-8, 10-12, 14-16, 18-20, 22-24) that were challenged in the IPR have been canceled. Any infringement theory relying on these claims is invalid.

Strategic summary

CANCELED vs. SUSTAINED vs. UNTESTED:
All challenged claims of US8966347, specifically claims 1-8, 10-12, 14-16, 18-20, 22-24, have been CANCELED as unpatentable in IPR2022-01171. The remaining claims 9, 17, and 21 were not challenged in the IPR, and therefore remain UNTESTED.

Estoppel landscape:
Under 35 U.S.C. § 315(e)(2), the petitioners (Western Digital Technologies, Inc., Western Digital Corporation, and SanDisk LLC) and their privies are estopped from asserting in a civil action or other USPTO proceeding that claims 1-8, 10-12, 14-16, 18-20, 22-24 are unpatentable on any ground that they raised or reasonably could have raised during IPR2022-01171. For a defendant facing assertion of this patent who is not in privity with the petitioners, all prior-art grounds remain available for challenging the untested claims (9, 17, 21), and potentially even the canceled claims in district court if certain conditions are met (e.g., Click-to-Call reversal or certain Arthrex arguments, though these are more complex).

Pattern signals:
This patent was challenged by a defensive aggregator (Unified Patents listed as petitioner on Google Patents, though the PTAB decision lists Western Digital, et al.), indicating a concerted effort to remove potentially problematic patents from the landscape. The patent owner, Viasat, Inc., initially appealed the adverse Final Written Decision but later voluntarily dismissed the appeal, suggesting they decided not to pursue the appeal further, possibly due to the strength of the invalidation arguments or a business decision.

Recommended next steps

As a defendant, the most impactful outcome of IPR2022-01171 is the cancellation of all challenged claims, including the independent claims. You should immediately review the Final Written Decision for IPR2022-01171 at the USPTO PTAB Decisions portal (search for "IPR2022-01171" or use the direct link to the FWD below) to understand the full scope of the invalidation.

The Final Written Decision states: "For the foregoing reasons, we determine that Petitioner has shown by a preponderance of the evidence that claims 1-8, 10-12, 14-16, 18-20, and 22-24 of U.S. Patent No. 8,966,347 are unpatentable."

The Federal Circuit appeal for IPR2022-01171, Case No. 24-1483, was voluntarily dismissed without prejudice on June 6, 2024. This means the PTAB's decision of unpatentability for claims 1-8, 10-12, 14-16, 18-20, 22-24 stands.

If a demand letter or assertion cites claims 1-8, 10-12, 14-16, 18-20, or 22-24, the patent owner's case is significantly weakened. This information should be leveraged in any response to the patent owner. For the remaining untested claims (9, 17, 21), a defendant could consider filing new IPR petitions if strong prior art exists, but given the outcome of the first IPR, the value of those claims to the patent owner may be diminished.

Links:

• IPR2022-01171 (Final Written Decision): https://developer.uspto.gov/ptab-api/documents/IPR2022-01171/PTAB%20Decision%20--%20Final%20Written%20Decision%20--%202023-06-21.pdf
• Federal Circuit Appeal 24-1483 (CourtListener): https://www.courtlistener.com/docket/68224535/viasat-inc-v-western-digital-technologies-inc/