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 9031537 as of the most recent ingest from the USPTO ODP API, and web searches did not surface any such proceedings. This indicates a defensive posture where the patent's claims have not been challenged or re-examined through the PTAB trial process.

Strategic summary

As of today, US Patent 9031537 has no record of any AIA trial proceedings (IPR, PGR, or CBM) at the PTAB. This means that all claims of the patent are considered UNTESTED in the context of these administrative review processes. The patent has not been subjected to challenges for invalidity under Sections 102 (novelty) or 103 (obviousness) through IPR, nor for broader grounds including Section 101 (patent eligibility) or Section 112 (written description, enablement, indefiniteness) through PGR or CBM.

The absence of PTAB activity suggests a few possibilities. It could mean that the patent has not been a significant target for infringement litigation that would prompt accused infringers to file IPRs or PGRs, which are often strategic tools used in conjunction with district court litigation. Alternatively, potential challengers may have assessed the claims and determined that a PTAB challenge would not be successful or that other avenues for defense were more appropriate. The patent owner, Mesa Digital LLC, has been active in district court litigation with this patent in the past, with varied outcomes, including dismissals, but none of these appear to have led to corresponding PTAB proceedings for this specific patent.

Given the patent's publication date of May 12, 2015, it would have been eligible for IPR after February 12, 2016 (9 months after issuance), and potentially for PGR within the initial nine-month window if it qualified as a first-inventor-to-file patent. Covered Business Method (CBM) review was another possibility for patents related to financial products or services, which could be filed without the nine-month time limit of PGR, but the CBM program ended on September 15, 2020. The lack of any such filings implies that, for now, the claims remain as issued.

Recommended next steps

Since there is no PTAB activity on file for US Patent 9031537, a defendant facing assertion of this patent has a broad range of prior-art grounds still available to them. There is no estoppel landscape from prior PTAB proceedings that would limit challenges under 35 U.S.C. §§ 102, 103, 112, or 101.

For a defendant, the immediate next steps should include:

1. Conduct a comprehensive prior art search: Without PTAB precedent, a thorough independent search for prior art relevant to all asserted claims is crucial. This would involve identifying patents, printed publications, and potentially other forms of prior art (e.g., prior public use or on-sale activities) that could render the claims unpatentable.
2. Evaluate claims for all invalidity grounds: Assess the asserted claims against all available statutory invalidity grounds, including 35 U.S.C. §§ 101 (subject matter eligibility), 102 (novelty), 103 (obviousness), and 112 (written description, enablement, definiteness).
3. Consider a PTAB challenge: Although the patent has no existing PTAB record, filing an IPR could still be a viable strategy, particularly if strong prior art patents or printed publications are identified. An IPR can offer a faster and potentially less expensive alternative to district court litigation for challenging patent validity. The PTAB generally operates with a "broadest reasonable interpretation" standard for claim construction, which can be an advantage for challengers.
4. Monitor for future PTAB filings: Stay vigilant for any new IPR, PGR, or other PTAB petitions filed against this patent, as the landscape could change. Information on PTAB proceedings is available through the USPTO's P-TACTS system.