PTAB challenges

Proceedings overview

A total of eight AIA trial proceedings have been filed against US Patent 9,063,755. Of these, three have resulted in Final Written Decisions (FWDs), with claims being partially invalidated in IPR2022-00785 and IPR2022-00790, and all challenged claims found not unpatentable in IPR2021-01455. One proceeding terminated due to settlement, and four petitions were denied institution on the merits. This complex history suggests a mixed defensive posture: while some claims have been successfully challenged, others have been sustained or not challenged, indicating the patent owner has defended the patent robustly in some instances.

IPR2022-00785 — Unified Patents, LLC v. Express Mobile, Inc.

• Type: Inter Partes Review
• Filed: Information not explicitly available in provided text, but FWD implies institution in 2022.
• Status: Final Written Decision, partially invalidating claims.
• Judge panel: Information not public.
• Petition grounds: Challenged claims 1-6, 9, and 12-16 as unpatentable under 35 U.S.C. § 103 over combinations of various prior art references including US 2004/0073570 A1 (Haddad) and US 2007/0055745 A1 (Moore).
• Institution decision: Instituted claims 1-6, 9, 12-16 under various combinations of prior art. Date not explicitly stated but preceded FWD.
• Final Written Decision (issued 2023-11-20): The PTAB found claims 1-3, 5, 6, 9, 12, 13, and 15 unpatentable. Claims 4, 14, and 16 were found not unpatentable.
  • The Board concluded that petitioner demonstrated by a preponderance of the evidence that claims 1-3, 5, 6, 9, 12, 13, and 15 are unpatentable under 35 U.S.C. § 103 over various combinations of Haddad and Moore.
  • The Board concluded that petitioner did not demonstrate by a preponderance of the evidence that claims 4, 14, and 16 are unpatentable.
• Settlement / termination: Not settled; Final Written Decision issued.
• Appeal: Information not public.
• Defensive value: Claims 1-3, 5, 6, 9, 12, 13, and 15 are canceled. Any infringement theory built on these claims is significantly weakened. Claims 4, 14, and 16, however, were sustained and remain valid.

IPR2022-00790 — Unified Patents, LLC v. Express Mobile, Inc.

• Type: Inter Partes Review
• Filed: Information not explicitly available in provided text, but FWD implies institution in 2022.
• Status: Final Written Decision, partially invalidating claims.
• Judge panel: Information not public.
• Petition grounds: Challenged claims 1-6, 9, 12-16 as unpatentable under 35 U.S.C. § 103 over combinations of various prior art references including US 2004/0073570 A1 (Haddad) and US 2007/0055745 A1 (Moore).
• Institution decision: Instituted claims 1-6, 9, 12-16 under various combinations of prior art. Date not explicitly stated but preceded FWD.
• Final Written Decision (issued 2023-11-20): The PTAB found claims 1-3, 5, 6, 9, 12, 13, and 15 unpatentable. Claims 4, 14, and 16 were found not unpatentable.
  • The Board concluded that petitioner demonstrated by a preponderance of the evidence that claims 1-3, 5, 6, 9, 12, 13, and 15 are unpatentable under 35 U.S.C. § 103 over various combinations of Haddad and Moore.
  • The Board concluded that petitioner did not demonstrate by a preponderance of the evidence that claims 4, 14, and 16 are unpatentable.
• Settlement / termination: Not settled; Final Written Decision issued.
• Appeal: Information not public.
• Defensive value: This proceeding had identical outcomes to IPR2022-00785. Claims 1-3, 5, 6, 9, 12, 13, and 15 are definitively canceled. Claims 4, 14, and 16 were sustained and are still patentable.

IPR2021-01455 — Unified Patents, LLC v. Express Mobile, Inc.

• Type: Inter Partes Review
• Filed: Information not explicitly available in provided text, but FWD implies institution.
• Status: Final Written Decision, claims found not unpatentable.
• Judge panel: Information not public.
• Petition grounds: Challenged claims 1-6, 9, and 12-16 as unpatentable. Specific prior art and statutory basis details are not public in the provided snippet.
• Institution decision: Instituted. Date not explicitly stated.
• Final Written Decision (issued 2022-11-21): The PTAB found that claims 1-6, 9, 12-16 were not shown to be unpatentable.
  • The Board concluded that petitioner did not demonstrate by a preponderance of the evidence that claims 1-6, 9, 12-16 are unpatentable.
• Settlement / termination: Not settled; Final Written Decision issued.
• Appeal: Information not public.
• Defensive value: All challenged claims (1-6, 9, 12-16) were sustained. This indicates the patent owner successfully defended these claims against the specific grounds raised in this IPR, making an IPR-based defense using the same or substantially similar art and arguments significantly harder.

IPR2022-00249 — Unified Patents, LLC v. Express Mobile, Inc.

• Type: Inter Partes Review
• Filed: Information not public.
• Status: Settlement.
• Judge panel: Information not public.
• Petition grounds: Information not public, but likely challenged a subset of claims 1-16 based on prior art.
• Institution decision: Information not public, but a settlement typically occurs after institution but before an FWD.
• Final Written Decision: Not issued due to settlement.
• Settlement / termination: Settled. The terms are confidential.
• Appeal: Not applicable due to settlement.
• Defensive value: This IPR did not result in a final judgment on the merits, so no claims were formally canceled or sustained by the Board. The settlement terms are unknown, so it's unclear if any claims were implicitly abandoned or licensed. However, it indicates the petitioner found it advantageous to settle rather than pursue a final decision.

IPR2021-00709 — Unified Patents, LLC v. Express Mobile, Inc.

• Type: Inter Partes Review
• Filed: Information not public.
• Status: Not Instituted - Merits.
• Judge panel: Information not public.
• Petition grounds: Challenged a subset of claims of US9063755, likely claims 1-16. Specific prior art and statutory basis not public.
• Institution decision: Denied institution on the merits. This means the PTAB found that the petition did not demonstrate a reasonable likelihood that the petitioner would prevail with respect to at least one challenged claim.
• Final Written Decision: Not issued due to denial of institution.
• Settlement / termination: Denied institution.
• Appeal: Information not public.
• Defensive value: The PTAB found the petition's arguments on unpatentability insufficient to proceed to trial. This strengthens the patent owner's position against similar prior art arguments, as the Board found them unconvincing.

IPR2021-01144 — Unified Patents, LLC v. Express Mobile, Inc.

• Type: Inter Partes Review
• Filed: Information not public.
• Status: Not Instituted - Merits.
• Judge panel: Information not public.
• Petition grounds: Challenged a subset of claims of US9063755, likely claims 1-16. Specific prior art and statutory basis not public.
• Institution decision: Denied institution on the merits.
• Final Written Decision: Not issued due to denial of institution.
• Settlement / termination: Denied institution.
• Appeal: Information not public.
• Defensive value: Similar to IPR2021-00709, the PTAB found the petitioner's arguments insufficient to warrant a trial, strengthening the patent's resilience against the specific grounds presented.

IPR2021-01228 — Unified Patents, LLC v. Express Mobile, Inc.

• Type: Inter Partes Review
• Filed: Information not public.
• Status: Not Instituted - Merits.
• Judge panel: Information not public.
• Petition grounds: Challenged a subset of claims of US9063755, likely claims 1-16. Specific prior art and statutory basis not public.
• Institution decision: Denied institution on the merits.
• Final Written Decision: Not issued due to denial of institution.
• Settlement / termination: Denied institution.
• Appeal: Information not public.
• Defensive value: Another instance where the PTAB sided with the patent owner by denying institution, suggesting the unpatentability arguments or supporting evidence were not compelling enough for trial.

IPR2021-01471 — Unified Patents, LLC v. Express Mobile, Inc.

• Type: Inter Partes Review
• Filed: Information not public.
• Status: Not Instituted - Merits.
• Judge panel: Information not public.
• Petition grounds: Challenged a subset of claims of US9063755, likely claims 1-16. Specific prior art and statutory basis not public.
• Institution decision: Denied institution on the merits.
• Final Written Decision: Not issued due to denial of institution.
• Settlement / termination: Denied institution.
• Appeal: Information not public.
• Defensive value: This further reinforces the patent's robustness against the particular challenges raised in these denied petitions.

Strategic summary

Claims 1-3, 5, 6, 9, 12, 13, and 15 of US9063755 have been CANCELED as unpatentable in IPR2022-00785 and IPR2022-00790. This significantly narrows the scope of the patent. Any current assertion of the patent that relies on these claims is fundamentally undermined. Claims 4, 14, and 16 were SUSTAINED in these same proceedings, meaning they were found not unpatentable. Furthermore, claims 1-6, 9, 12-16 were SUSTAINED in IPR2021-01455, indicating that for the specific prior art and arguments presented in that IPR, the patent owner successfully defended those claims. The remaining claims (7, 8, 10, 11) have been UNTESETED through these IPR proceedings.

The estoppel landscape is complex. For Unified Patents, LLC (and its privies), 35 U.S.C. § 315(e)(2) bars them from raising any ground they raised or reasonably could have raised in IPR2022-00785, IPR2022-00790, and IPR2021-01455. This applies to the claims adjudicated in those FWDs (1-6, 9, 12-16). However, the grounds on which institution was denied (IPR2021-00709, IPR2021-01144, IPR2021-01228, IPR2021-01471) generally do not create statutory estoppel against the petitioner. For other potential defendants, prior-art grounds not raised or reasonably available to Unified Patents in the FWDs, or entirely new prior art, would still be available to challenge claims 4, 14, and 16, as well as the untested claims 7, 8, 10, and 11.

The pattern signals strongly indicate that Unified Patents, LLC, a defensive aggregator, has been actively challenging this patent, filing multiple IPRs. Their strategy seems to involve multiple bites at the apple with varying prior art combinations or legal theories, and they achieved partial success in canceling a majority of the challenged claims in two proceedings. The patent owner has also shown a willingness to defend, securing favorable outcomes (no invalidation) in one FWD and several denials of institution. The significant litigation history, including multiple district court cases and Federal Circuit appeals related to this patent family, suggests that Express Mobile Inc. is actively enforcing its patents.

Recommended next steps

• If you are a defendant facing assertion of US9063755, you should immediately review the Final Written Decisions from IPR2022-00785 and IPR2022-00790.
  • In IPR2022-00785, claims 1-3, 5, 6, 9, 12, 13, and 15 were found unpatentable. The disposition states: "For the foregoing reasons, we determine that Petitioner has shown by a preponderance of the evidence that claims 1-3, 5, 6, 9, 12, 13, and 15 of U.S. Patent No. 9,063,755 are unpatentable. We further determine that Petitioner has not shown by a preponderance of the evidence that claims 4, 14, and 16 of U.S. Patent No. 9,063,755 are unpatentable." (Link to IPR2022-00785 FWD: https://portal.unifiedpatents.com/ptab/case/IPR2022-00785)
  • In IPR2022-00790, claims 1-3, 5, 6, 9, 12, 13, and 15 were also found unpatentable. The disposition states: "For the foregoing reasons, we determine that Petitioner has shown by a preponderance of the evidence that claims 1-3, 5, 6, 9, 12, 13, and 15 of U.S. Patent No. 9,063,755 are unpatentable. We further determine that Petitioner has not shown by a preponderance of the evidence that claims 4, 14, and 16 of U.S. Patent No. 9,063,755 are unpatentable." (Link to IPR2022-00790 FWD: https://portal.unifiedpatents.com/ptab/case/IPR2022-00790)
• Any demand letter or complaint citing the invalidated claims (1-3, 5, 6, 9, 12, 13, 15) should be met with strong arguments for non-infringement or invalidity based on these FWDs.
• For claims 4, 14, and 16, which were sustained in IPR2022-00785 and IPR2022-00790, and for claims 1-6, 9, 12-16 in IPR2021-01455, consider the estoppel implications if you are a privy to Unified Patents. If not, evaluate new prior art or different invalidity theories for these claims and the untested claims (7, 8, 10, 11).
• Given the patent's extensive PTAB history, a thorough prior art search, specifically looking for art not considered in the FWDs, is advisable for any remaining claims.## Proceedings overview

A total of eight AIA trial proceedings have been filed against US Patent 9,063,755. Of these, three have resulted in Final Written Decisions (FWDs), with claims being partially invalidated in IPR2022-00785 and IPR2022-00790, and all challenged claims found not unpatentable in IPR2021-01455. One proceeding terminated due to settlement, and four petitions were denied institution on the merits. This complex history suggests a mixed defensive posture: while some claims have been successfully challenged, others have been sustained or not challenged, indicating the patent owner has defended the patent robustly in some instances.

IPR2022-00785 — Unified Patents, LLC v. Express Mobile, Inc.

• Type: Inter Partes Review
• Filed: 2022-04-01 (approximate, based on typical IPR timeline leading to FWD in late 2023)
• Status: Final Written Decision, partially invalidating claims.
• Judge panel: Information not public in the provided snippet.
• Petition grounds: Challenged claims 1-6, 9, and 12-16 as unpatentable under 35 U.S.C. § 103 over combinations of various prior art references including US 2004/0073570 A1 (Haddad) and US 2007/0055745 A1 (Moore).
• Institution decision: Instituted claims 1-6, 9, 12-16 under various combinations of prior art. Date not explicitly stated but preceded FWD.
• Final Written Decision (issued 2023-11-20): The PTAB found claims 1-3, 5, 6, 9, 12, 13, and 15 unpatentable. Claims 4, 14, and 16 were found not unpatentable.
  • The Board concluded that petitioner demonstrated by a preponderance of the evidence that claims 1-3, 5, 6, 9, 12, 13, and 15 of U.S. Patent No. 9,063,755 are unpatentable under 35 U.S.C. § 103 over various combinations of Haddad and Moore.
  • The Board concluded that petitioner did not demonstrate by a preponderance of the evidence that claims 4, 14, and 16 of U.S. Patent No. 9,063,755 are unpatentable.
• Settlement / termination: Not settled; Final Written Decision issued.
• Appeal: Information not public in the provided snippet. Google Patents indicates a "US case filed in Court of Appeals for the Federal Circuit" with case number 24-1977, but further details on the issues or disposition are not provided.
• Defensive value: Claims 1-3, 5, 6, 9, 12, 13, and 15 are canceled. Any infringement theory built on these claims is significantly weakened. Claims 4, 14, and 16, however, were sustained and remain valid.

IPR2022-00790 — Unified Patents, LLC v. Express Mobile, Inc.

• Type: Inter Partes Review
• Filed: 2022-04-01 (approximate, based on typical IPR timeline leading to FWD in late 2023)
• Status: Final Written Decision, partially invalidating claims.
• Judge panel: Information not public in the provided snippet.
• Petition grounds: Challenged claims 1-6, 9, 12-16 as unpatentable under 35 U.S.C. § 103 over combinations of various prior art references including US 2004/0073570 A1 (Haddad) and US 2007/0055745 A1 (Moore).
• Institution decision: Instituted claims 1-6, 9, 12-16 under various combinations of prior art. Date not explicitly stated but preceded FWD.
• Final Written Decision (issued 2023-11-20): The PTAB found claims 1-3, 5, 6, 9, 12, 13, and 15 unpatentable. Claims 4, 14, and 16 were found not unpatentable.
  • The Board concluded that petitioner demonstrated by a preponderance of the evidence that claims 1-3, 5, 6, 9, 12, 13, and 15 of U.S. Patent No. 9,063,755 are unpatentable under 35 U.S.C. § 103 over various combinations of Haddad and Moore.
  • The Board concluded that petitioner did not demonstrate by a preponderance of the evidence that claims 4, 14, and 16 of U.S. Patent No. 9,063,755 are unpatentable.
• Settlement / termination: Not settled; Final Written Decision issued.
• Appeal: Information not public in the provided snippet. Google Patents indicates a "US case filed in Court of Appeals for the Federal Circuit" with case number 24-1190, but further details on the issues or disposition are not provided.
• Defensive value: This proceeding had identical outcomes to IPR2022-00785. Claims 1-3, 5, 6, 9, 12, 13, and 15 are definitively canceled. Claims 4, 14, and 16 were sustained and are still patentable.

IPR2021-01455 — Unified Patents, LLC v. Express Mobile, Inc.

• Type: Inter Partes Review
• Filed: 2021-08-01 (approximate, based on typical IPR timeline leading to FWD in late 2022)
• Status: Final Written Decision, claims found not unpatentable.
• Judge panel: Information not public in the provided snippet.
• Petition grounds: Challenged claims 1-6, 9, and 12-16 as unpatentable. Specific prior art and statutory basis details are not public in the provided snippet.
• Institution decision: Instituted. Date not explicitly stated.
• Final Written Decision (issued 2022-11-21): The PTAB found that claims 1-6, 9, 12-16 were not shown to be unpatentable.
  • The Board concluded that petitioner did not demonstrate by a preponderance of the evidence that claims 1-6, 9, 12-16 of U.S. Patent No. 9,063,755 are unpatentable.
• Settlement / termination: Not settled; Final Written Decision issued.
• Appeal: Google Patents indicates a "US case filed in Court of Appeals for the Federal Circuit" with case number 23-2265, but further details on the issues or disposition are not provided.
• Defensive value: All challenged claims (1-6, 9, 12-16) were sustained. This indicates the patent owner successfully defended these claims against the specific grounds raised in this IPR, making an IPR-based defense using the same or substantially similar art and arguments significantly harder.

IPR2022-00249 — Unified Patents, LLC v. Express Mobile, Inc.

• Type: Inter Partes Review
• Filed: Information not public.
• Status: Settlement.
• Judge panel: Information not public.
• Petition grounds: Information not public, but likely challenged a subset of claims 1-16 based on prior art.
• Institution decision: Information not public, but a settlement typically occurs after institution but before an FWD.
• Final Written Decision: Not issued due to settlement.
• Settlement / termination: Settled. The terms are confidential.
• Appeal: Not applicable due to settlement.
• Defensive value: This IPR did not result in a final judgment on the merits, so no claims were formally canceled or sustained by the Board. The settlement terms are unknown, so it's unclear if any claims were implicitly abandoned or licensed. However, it indicates the petitioner found it advantageous to settle rather than pursue a final decision.

IPR2021-00709 — Unified Patents, LLC v. Express Mobile, Inc.

• Type: Inter Partes Review
• Filed: Information not public.
• Status: Not Instituted - Merits.
• Judge panel: Information not public.
• Petition grounds: Challenged a subset of claims of US9063755, likely claims 1-16. Specific prior art and statutory basis not public.
• Institution decision: Denied institution on the merits. This means the PTAB found that the petition did not demonstrate a reasonable likelihood that the petitioner would prevail with respect to at least one challenged claim.
• Final Written Decision: Not issued due to denial of institution.
• Settlement / termination: Denied institution.
• Appeal: Information not public.
• Defensive value: The PTAB found the petition's arguments on unpatentability insufficient to proceed to trial. This strengthens the patent owner's position against similar prior art arguments, as the Board found them unconvincing.

IPR2021-01144 — Unified Patents, LLC v. Express Mobile, Inc.

• Type: Inter Partes Review
• Filed: Information not public.
• Status: Not Instituted - Merits.
• Judge panel: Information not public.
• Petition grounds: Challenged a subset of claims of US9063755, likely claims 1-16. Specific prior art and statutory basis not public.
• Institution decision: Denied institution on the merits.
• Final Written Decision: Not issued due to denial of institution.
• Settlement / termination: Denied institution.
• Appeal: Information not public.
• Defensive value: Similar to IPR2021-00709, the PTAB found the petitioner's arguments insufficient to warrant a trial, strengthening the patent's resilience against the specific grounds presented.

IPR2021-01228 — Unified Patents, LLC v. Express Mobile, Inc.

• Type: Inter Partes Review
• Filed: Information not public.
• Status: Not Instituted - Merits.
• Judge panel: Information not public.
• Petition grounds: Challenged a subset of claims of US9063755, likely claims 1-16. Specific prior art and statutory basis not public.
• Institution decision: Denied institution on the merits.
• Final Written Decision: Not issued due to denial of institution.
• Settlement / termination: Denied institution.
• Appeal: Information not public.
• Defensive value: Another instance where the PTAB sided with the patent owner by denying institution, suggesting the unpatentability arguments or supporting evidence were not compelling enough for trial.

IPR2021-01471 — Unified Patents, LLC v. Express Mobile, Inc.

• Type: Inter Partes Review
• Filed: Information not public.
• Status: Not Instituted - Merits.
• Judge panel: Information not public.
• Petition grounds: Challenged a subset of claims of US9063755, likely claims 1-16. Specific prior art and statutory basis not public.
• Institution decision: Denied institution on the merits.
• Final Written Decision: Not issued due to denial of institution.
• Settlement / termination: Denied institution.
• Appeal: Information not public.
• Defensive value: This further reinforces the patent's robustness against the particular challenges raised in these denied petitions.

Strategic summary

Claims 1-3, 5, 6, 9, 12, 13, and 15 of US9063755 have been CANCELED as unpatentable in IPR2022-00785 and IPR2022-00790. This significantly narrows the scope of the patent. Any current assertion of the patent that relies on these claims is fundamentally undermined. Claims 4, 14, and 16 were SUSTAINED in these same proceedings, meaning they were found not unpatentable. Furthermore, claims 1-6, 9, 12-16 were SUSTAINED in IPR2021-01455, indicating that for the specific prior art and arguments presented in that IPR, the patent owner successfully defended those claims. The remaining claims (7, 8, 10, 11) have been UNTETESTED through these IPR proceedings.

The estoppel landscape is complex. For Unified Patents, LLC (and its privies), 35 U.S.C. § 315(e)(2) bars them from raising any ground they raised or reasonably could have raised in IPR2022-00785, IPR2022-00790, and IPR2021-01455. This applies to the claims adjudicated in those FWDs (1-6, 9, 12-16). However, the grounds on which institution was denied (IPR2021-00709, IPR2021-01144, IPR2021-01228, IPR2021-01471) generally do not create statutory estoppel against the petitioner. For other potential defendants, prior-art grounds not raised or reasonably available to Unified Patents in the FWDs, or entirely new prior art, would still be available to challenge claims 4, 14, and 16, as well as the untested claims 7, 8, 10, and 11.

The pattern signals strongly indicate that Unified Patents, LLC, a defensive aggregator, has been actively challenging this patent, filing multiple IPRs. Their strategy seems to involve multiple bites at the apple with varying prior art combinations or legal theories, and they achieved partial success in canceling a majority of the challenged claims in two proceedings. The patent owner has also shown a willingness to defend, securing favorable outcomes (no invalidation) in one FWD and several denials of institution. The significant litigation history, including multiple district court cases and Federal Circuit appeals related to this patent family, suggests that Express Mobile Inc. is actively enforcing its patents.

Recommended next steps

• If you are a defendant facing assertion of US9063755, you should immediately review the Final Written Decisions from IPR2022-00785 and IPR2022-00790.
  • In IPR2022-00785, claims 1-3, 5, 6, 9, 12, 13, and 15 were found unpatentable. The disposition states: "For the foregoing reasons, we determine that Petitioner has shown by a preponderance of the evidence that claims 1-3, 5, 6, 9, 12, 13, and 15 of U.S. Patent No. 9,063,755 are unpatentable. We further determine that Petitioner has not shown by a preponderance of the evidence that claims 4, 14, and 16 of U.S. Patent No. 9,063,755 are unpatentable." (Link to IPR2022-00785 FWD: https://portal.unifiedpatents.com/ptab/case/IPR2022-00785)
  • In IPR2022-00790, claims 1-3, 5, 6, 9, 12, 13, and 15 were also found unpatentable. The disposition states: "For the foregoing reasons, we determine that Petitioner has shown by a preponderance of the evidence that claims 1-3, 5, 6, 9, 12, 13, and 15 of U.S. Patent No. 9,063,755 are unpatentable. We further determine that Petitioner has not shown by a preponderance of the evidence that claims 4, 14, and 16 of U.S. Patent No. 9,063,755 are unpatentable." (Link to IPR2022-00790 FWD: https://portal.unifiedpatents.com/ptab/case/IPR2022-00790)
• Any demand letter or complaint citing the invalidated claims (1-3, 5, 6, 9, 12, 13, 15) should be met with strong arguments for non-infringement or invalidity based on these FWDs.
• For claims 4, 14, and 16, which were sustained in IPR2022-00785 and IPR2022-00790, and for claims 1-6, 9, 12-16 in IPR2021-01455, consider the estoppel implications if you are a privy to Unified Patents. If not, evaluate new prior art or different invalidity theories for these claims and the untested claims (7, 8, 10, 11).
• Given the patent's extensive PTAB history, a thorough prior art search, specifically looking for art not considered in the FWDs, is advisable for any remaining claims.