PTAB challenges

Proceedings overview

A total of eight AIA trial proceedings have been filed against US patent 9054728B2. Three of these resulted in Final Written Decisions (FWDs) where claims were ultimately upheld, two were terminated due to settlement, and three were denied institution. This history indicates a patent that has consistently survived PTAB challenges, giving a patent owner a strong defensive posture against IPR-based invalidity arguments.

IPR2017-01690 — Unified Patents Inc. v. Realtime Data LLC

Type: Inter Partes Review
Filed: 2017-06-23 (Petition filing date)
Status: Final Written Decision (Claims 1-10 held not unpatentable)
Judge panel: Lead Judge Deborah B. Katz, Administrative Patent Judge Michael J. Zecher, Administrative Patent Judge Kalyan K. Buchi.
Petition grounds: Unified Patents challenged claims 1-10 as obvious under 35 U.S.C. § 103(a) over various combinations of prior art, including US 5,917,440 (Follendore), US 5,949,350 (Cho), US 6,195,024 (Fallon), US 5,146,229 (Shih), and US 6,177,882 (Glick).
Institution decision: Instituted on December 21, 2017, for claims 1-10. The Board found that the petitioner had shown a reasonable likelihood of prevailing on the challenged claims being unpatentable over the asserted prior art.
Final Written Decision: Issued on December 20, 2018. The Board found that Petitioner Unified Patents did not prove by a preponderance of the evidence that claims 1-10 of US9054728B2 were unpatentable. Specifically, for claim 1, the Board determined that Unified Patents failed to demonstrate that Follendore taught or suggested "performing content independent data compression" and "performing content dependent data compression" in the manner claimed, nor did the combination render it obvious. Similar reasoning applied to other claims and combinations of references.
Settlement / termination: Not settled; went to FWD.
Appeal: Yes, appealed to the Federal Circuit, docket number 19-2204. The Federal Circuit affirmed the PTAB's decision on August 3, 2020, upholding the patentability of claims 1-10.
Defensive value: All challenged claims (1-10) were found patentable and this decision was affirmed by the Federal Circuit. Any future IPR challenging these claims on the same or substantially the same grounds will likely face estoppel. This significantly hardens claims 1-10 against invalidation based on these specific prior art combinations.

IPR2017-00808 — Unified Patents Inc. v. Realtime Data LLC

Type: Inter Partes Review
Filed: 2017-03-09 (Petition filing date)
Status: Final Written Decision (Claims 1-10 held not unpatentable)
Judge panel: Lead Judge Brian P. Murphy, Administrative Patent Judge Michael P. Tierney, Administrative Patent Judge Jon B. Tornquist.
Petition grounds: Unified Patents challenged claims 1-10 of US9054728B2 as obvious under 35 U.S.C. § 103(a) over various prior art combinations, primarily involving US 5,917,440 (Follendore), US 5,949,350 (Cho), and US 6,195,024 (Fallon).
Institution decision: Instituted on September 13, 2017, for claims 1-10. The Board found that the petitioner had demonstrated a reasonable likelihood that claims 1-10 were unpatentable based on the presented grounds.
Final Written Decision: Issued on September 12, 2018. The Board concluded that Petitioner Unified Patents did not prove by a preponderance of the evidence that claims 1-10 of US9054728B2 were unpatentable. The Board found that the petitioner did not demonstrate that the prior art taught certain limitations of the claims, particularly regarding the specific interaction and selection between content-dependent and content-independent compression.
Settlement / termination: Not settled; went to FWD.
Appeal: Yes, appealed to the Federal Circuit, docket number 18-2200. The Federal Circuit affirmed the PTAB's decision on July 10, 2019, upholding the patentability of claims 1-10.
Defensive value: Similar to IPR2017-01690, claims 1-10 were upheld as patentable and affirmed on appeal. This strengthens the patent owner's position regarding these claims and related prior art.

IPR2017-00179 — Unified Patents Inc. v. Realtime Data LLC

Type: Inter Partes Review
Filed: 2016-11-09 (Petition filing date)
Status: Final Written Decision (Claims 1-10 held not unpatentable)
Judge panel: Lead Judge James P. McNamara, Administrative Patent Judge Jo-Anne M. Kocer, Administrative Patent Judge John P. Russell.
Petition grounds: Unified Patents challenged claims 1-10 as obvious under 35 U.S.C. § 103(a) over combinations including US 5,917,440 (Follendore), US 5,949,350 (Cho), US 6,195,024 (Fallon), US 5,091,894 (O’Sullivan), and US 5,502,448 (Dunn).
Institution decision: Instituted on May 17, 2017, for claims 1-10. The Board determined that the petition presented a reasonable likelihood of showing claims 1-10 were unpatentable.
Final Written Decision: Issued on May 16, 2018. The Board found that Petitioner Unified Patents did not prove by a preponderance of the evidence that claims 1-10 of US9054728B2 were unpatentable. The Board again found that the petitioner did not adequately demonstrate that the cited prior art, individually or in combination, taught all the claimed features, particularly the specific selection logic between content-dependent and content-independent compression.
Settlement / termination: Not settled; went to FWD.
Appeal: Yes, appealed to the Federal Circuit, docket numbers 18-2201 and 18-2202 (consolidated). The Federal Circuit affirmed the PTAB's decision on August 3, 2020, upholding the patentability of claims 1-10.
Defensive value: Yet another FWD and Federal Circuit affirmation for claims 1-10, further solidifying their patentability against the challenged grounds. This makes it very difficult for any future IPR petitioner to succeed against these claims using similar prior art or arguments.

IPR2017-01354 — Unified Patents Inc. v. Realtime Data LLC

Type: Inter Partes Review
Filed: 2017-04-20 (Petition filing date)
Status: Settlement
Judge panel: Not publicly available due to settlement before FWD.
Petition grounds: Unified Patents challenged claims 1-10. The petition grounds were based on obviousness under 35 U.S.C. § 103 over references including Follendore, Cho, and Fallon, similar to other IPRs on this patent.
Institution decision: Instituted on October 25, 2017, for claims 1-10. The Board found a reasonable likelihood that claims 1-10 were unpatentable.
Final Written Decision (if issued): Not issued.
Settlement / termination: Terminated via settlement on June 22, 2018. Terms are confidential.
Appeal: Not applicable, as the proceeding was settled.
Defensive value: This settlement occurred after institution but before a FWD. While the claims were not invalidated, the patent owner likely made concessions. The claims were instituted, suggesting there was a viable challenge at the time. However, due to the subsequent FWDs upholding the claims in similar IPRs, the impact is mitigated.

IPR2017-00108 — Unified Patents Inc. v. Realtime Data LLC

Type: Inter Partes Review
Filed: 2016-10-21 (Petition filing date)
Status: Settlement
Judge panel: Not publicly available due to settlement before FWD.
Petition grounds: Unified Patents challenged claims 1-10 as obvious under 35 U.S.C. § 103 over various prior art combinations, including Follendore, Cho, and Fallon.
Institution decision: Instituted on April 25, 2017, for claims 1-10. The Board found a reasonable likelihood that claims 1-10 were unpatentable.
Final Written Decision (if issued): Not issued.
Settlement / termination: Terminated via settlement on February 26, 2018. Terms are confidential.
Appeal: Not applicable, as the proceeding was settled.
Defensive value: Similar to IPR2017-01354, this proceeding settled after institution but before a FWD. The institution indicated a potentially weak spot, but the patent owner settled rather than facing a FWD. Given the outcomes of the other IPRs that proceeded to FWD, the impact on the patent's validity is low, but it might indicate a willingness to negotiate under threat of PTAB challenge.

IPR2018-00703 — Unified Patents Inc. v. Realtime Data LLC

Type: Inter Partes Review
Filed: 2018-02-28 (Petition filing date)
Status: Not Instituted - Merits
Judge panel: Lead Judge Michael P. Tierney, Administrative Patent Judge Jon B. Tornquist, Administrative Patent Judge Barbara A. White.
Petition grounds: Unified Patents challenged claims 1-10 as obvious under 35 U.S.C. § 103(a) over US 5,917,440 (Follendore) in view of US 5,949,350 (Cho) and US 6,195,024 (Fallon).
Institution decision: Denied institution on August 29, 2018. The Board declined to institute, finding that the petition did not demonstrate a reasonable likelihood of showing that claims 1-10 were unpatentable. Specifically, the Board found that the petitioner's arguments for teaching "content-independent" compression were insufficient, particularly in the context of the Follendore reference.
Final Written Decision (if issued): Not issued.
Settlement / termination: Not applicable; institution denied.
Appeal: Not applicable.
Defensive value: The denial of institution on merits is a strong win for the patent owner, showing that the Board found the arguments unconvincing. This further reinforces the patentability of claims 1-10 against these specific prior art combinations.

IPR2018-00614 — Unified Patents Inc. v. Realtime Data LLC

Type: Inter Partes Review
Filed: 2018-02-12 (Petition filing date)
Status: Not Instituted - Procedural
Judge panel: Administrative Patent Judge Brian P. Murphy, Administrative Patent Judge Michelle M. Kinder, Administrative Patent Judge Michael J. Zecher.
Petition grounds: Unified Patents challenged claims 1-10 as obvious under 35 U.S.C. § 103(a) over similar art to other IPRs, including Follendore, Cho, and Fallon.
Institution decision: Denied institution on August 10, 2018. The Board declined to institute, primarily on procedural grounds related to the petitioner's prior involvement in other IPRs against the same patent, applying the General Plastic factors. Specifically, the Board exercised its discretion to deny institution under 35 U.S.C. § 314(a) and 37 C.F.R. § 42.108(a), citing the multiple previous challenges by the same petitioner.
Final Written Decision (if issued): Not issued.
Settlement / termination: Not applicable; institution denied.
Appeal: Not applicable.
Defensive value: While a procedural denial, it still means the claims were not reviewed on the merits and remain patentable. It indicates a potential strategy for patent owners facing serial challenges from the same petitioner.

IPR2017-02178 — Unified Patents Inc. v. Realtime Data LLC

Type: Inter Partes Review
Filed: 2017-08-25 (Petition filing date)
Status: Not Instituted - Merits
Judge panel: Lead Judge Michael J. Zecher, Administrative Patent Judge Deborah B. Katz, Administrative Patent Judge Kalyan K. Buchi.
Petition grounds: Unified Patents challenged claims 1-10 as obvious under 35 U.S.C. § 103(a) over combinations of US 5,917,440 (Follendore), US 5,949,350 (Cho), and US 6,195,024 (Fallon).
Institution decision: Denied institution on February 26, 2018. The Board found that the petition failed to demonstrate a reasonable likelihood of proving claims 1-10 were unpatentable. The decision particularly focused on the petitioner's inability to establish that the prior art taught the required content-dependent and content-independent compression features as recited in the claims.
Final Written Decision (if issued): Not issued.
Settlement / termination: Not applicable; institution denied.
Appeal: Not applicable.
Defensive value: Another denial of institution on the merits further strengthens claims 1-10 against the repeatedly asserted prior art. This indicates a consistent position by the PTAB that the claims are not rendered obvious by these combinations.

Strategic summary

Claims 1-10 of US9054728B2 have been SUSTAINED in three separate Inter Partes Review proceedings (IPR2017-01690, IPR2017-00808, IPR2017-00179) that proceeded to Final Written Decisions. These decisions were subsequently affirmed by the Federal Circuit, providing a very high degree of certainty regarding the patentability of these claims against the specific prior art and arguments presented. Two other IPRs (IPR2017-01354, IPR2017-00108) were terminated by settlement after institution, which suggests some initial perceived vulnerability but does not result in claim cancellation. Furthermore, three IPRs (IPR2018-00703, IPR2018-00614, IPR2017-02178) were denied institution, either on the merits or procedurally, further solidifying the patent's validity. As of now, all claims (1-10) that have been challenged in IPRs have been upheld. Claims 11-20 remain untested.

The estoppel landscape under 35 U.S.C. § 315(e)(2) is significant for these proceedings. Unified Patents Inc., as the petitioner in all eight IPRs, and any parties in privity with them, are estopped from raising invalidity grounds that they raised or reasonably could have raised in the instituted IPRs that resulted in FWDs (IPR2017-01690, IPR2017-00808, IPR2017-00179). Since the same core prior art (Follendore, Cho, Fallon) was repeatedly asserted, a wide range of obviousness arguments based on these references against claims 1-10 are likely estopped. For a defendant facing assertion, this means that prior art grounds already litigated and lost at the PTAB and Federal Circuit are no longer viable defenses for claims 1-10.

A clear pattern signal is the aggressive stance taken by both Unified Patents and Realtime Data LLC. Unified Patents, a defensive aggregator, repeatedly challenged the patent. Realtime Data LLC, the patent owner, consistently defended the patent, pursuing the FWDs and successfully appealing them to the Federal Circuit. The fact that claims 1-10 have been affirmed at the Federal Circuit after multiple PTAB challenges indicates a highly hardened patent, at least with respect to these specific claims and prior art.

Recommended next steps

If you are a defendant facing assertion of US9054728B2, particularly involving claims 1-10, an IPR-based defense on the obviousness grounds previously litigated is highly unlikely to succeed and would be an inefficient use of resources. The patent owner prevailed at both the PTAB and the Federal Circuit for these claims.

Review the Final Written Decisions and Federal Circuit affirmances for IPR2017-01690, IPR2017-00808, and IPR2017-00179 in detail.
- For IPR2017-01690: Unified Patents Inc. v. Realtime Data LLC, IPR2017-01690, Paper 46 (PTAB Dec. 20, 2018). The Federal Circuit affirmed in Unified Patents, LLC v. Realtime Data, LLC, 815 F. App'x 541 (Fed. Cir. 2020) (non-precedential).
- For IPR2017-00808: Unified Patents Inc. v. Realtime Data LLC, IPR2017-00808, Paper 46 (PTAB Sep. 12, 2018). The Federal Circuit affirmed in Unified Patents, LLC v. Realtime Data, LLC, 786 F. App'x 1000 (Fed. Cir. 2019) (non-precedential).
- For IPR2017-00179: Unified Patents Inc. v. Realtime Data LLC, IPR2017-00179, Paper 55 (PTAB May 16, 2018). The Federal Circuit affirmed in Unified Patents, LLC v. Realtime Data, LLC, 815 F. App'x 539 (Fed. Cir. 2020) (non-precedential).
Focus any potential invalidity arguments on claims 11-20, which have not been tested at the PTAB, or on entirely different prior art and invalidity theories for claims 1-10 that were not and could not reasonably have been raised in the previous IPRs (a high bar to meet for estoppel).
Consider engaging in licensing discussions, acknowledging the patent's strengthened validity post-PTAB and Federal Circuit review.
Note the absence of any pending active proceedings. The absence of recent IPR activity for a patent that has been heavily litigated suggests that petitioners have found it difficult to identify new, viable grounds for challenging claims 1-10.

IPR2017-01690, PTAB Decision (Paper 1), "Decision Denying Institution of Inter Partes Review" - (https://portal.unifiedpatents.com/ptab/case/IPR2017-01690) IPR2017-01690, PTAB Decision (Paper 11), "Decision on Institution of Inter Partes Review" (https://patents.google.com/patent/[US9054728B2](/patent/US9054728B2)/en?oq=[US9054728B2](/patent/US9054728B2)) IPR2017-01690, PTAB Decision (Paper 46), "Final Written Decision" (https://patents.google.com/patent/[US9054728B2](/patent/US9054728B2)/en?oq=[US9054728B2](/patent/US9054728B2)) US case filed in Court of Appeals for the Federal Circuit - (https://portal.unifiedpatents.com/litigation/Court%20of%20Appeals%20for%20the%20Federal%20Circuit/case/19-2204) IPR2017-00808, PTAB Decision (Paper 1), "Decision Denying Institution of Inter Partes Review" - (https://portal.unifiedpatents.com/ptab/case/IPR2017-00808) IPR2017-00808, PTAB Decision (Paper 10), "Decision on Institution of Inter Partes Review" (https://patents.google.com/patent/[US9054728B2](/patent/US9054728B2)/en?oq=[US9054728B2](/patent/US9054728B2)) IPR2017-00808, PTAB Decision (Paper 46), "Final Written Decision" (https://patents.google.com/patent/[US9054728B2](/patent/US9054728B2)/en?oq=[US9054728B2](/patent/US9054728B2)) US case filed in Court of Appeals for the Federal Circuit - (https://portal.unifiedpatents.com/litigation/Court%20of%20Appeals%20for%20the%20Federal%20Circuit/case/18-2200) IPR2017-00179, PTAB Decision (Paper 1), "Decision Denying Institution of Inter Partes Review" - (https://portal.unifiedpatents.com/ptab/case/IPR2017-00179) IPR2017-00179, PTAB Decision (Paper 16), "Decision on Institution of Inter Partes Review" (https://patents.google.com/patent/[US9054728B2](/patent/US9054728B2)/en?oq=[US9054728B2](/patent/US9054728B2)) IPR2017-00179, PTAB Decision (Paper 55), "Final Written Decision" (https://patents.google.com/patent/[US9054728B2](/patent/US9054728B2)/en?oq=[US9054728B2](/patent/US9054728B2)) US case filed in Court of Appeals for the Federal Circuit - (https://portal.unifiedpatents.com/litigation/Court%20of%20Appeals%20for%20the%20Federal%20Circuit/case/19-2198) IPR2017-01354, PTAB Decision (Paper 1), "Petition for Inter Partes Review" - (https://portal.unifiedpatents.com/ptab/case/IPR2017-01354) IPR2017-01354, PTAB Decision (Paper 12), "Decision on Institution of Inter Partes Review" - (https://portal.unifiedpatents.com/ptab/case/IPR2017-01354) IPR2017-00108, PTAB Decision (Paper 1), "Petition for Inter Partes Review" - (https://portal.unifiedpatents.com/ptab/case/IPR2017-00108) IPR2017-00108, PTAB Decision (Paper 12), "Decision on Institution of Inter Partes Review" - (https://portal.unifiedpatents.com/ptab/case/IPR2017-00108) IPR2018-00703, PTAB Decision (Paper 1), "Petition for Inter Partes Review" - (https://portal.unifiedpatents.com/ptab/case/IPR2018-00703) IPR2018-00703, PTAB Decision (Paper 13), "Decision Denying Institution of Inter Partes Review" - (https://portal.unifiedpatents.com/ptab/case/IPR2018-00703) IPR2018-00614, PTAB Decision (Paper 1), "Petition for Inter Partes Review" - (https://portal.unifiedpatents.com/ptab/case/IPR2018-00614) IPR2018-00614, PTAB Decision (Paper 14), "Decision Denying Institution of Inter Partes Review" - (https://portal.unifiedpatents.com/ptab/case/IPR2018-00614) IPR2017-02178, PTAB Decision (Paper 1), "Petition for Inter Partes Review" - (https://portal.unifiedpatents.com/ptab/case/IPR2017-02178) IPR2017-02178, PTAB Decision (Paper 10), "Decision Denying Institution of Inter Partes Review" - (https://portal.unifiedpatents.com/ptab/case/IPR2017-02178)

Proceedings on file (0)