PTAB challenges

Proceedings overview

One AIA trial proceeding, IPR2019-01060, was filed against US Patent 9,078,488. The proceeding was instituted for all challenged claims but subsequently settled. As a result, no claims were invalidated by the PTAB, and all claims remain sustained by the Board. This indicates a moderate defensive posture; while the patent survived the IPR without invalidation, the institution of the IPR suggests that a challenger was able to demonstrate a reasonable likelihood of unpatentability for claims 1-20.

IPR2019-01060 — Unified Patents, LLC v. Nike, Inc.

• Type: Inter Partes Review
• Filed: 2019-05-13
• Status: Settled. The proceeding was instituted but terminated prior to a Final Written Decision due to a settlement between the parties.
• Judge panel: Michael P. Tierney, S. Kevin McShane, Jon B. Cathcart
• Petition grounds: Petitioner Unified Patents, LLC challenged claims 1-20 as unpatentable under 35 U.S.C. § 103(a) based on various combinations of prior art references:
  • US 2012/0233881 A1 (Dua)
  • WO 2013/055621 A1 (Bell)
  • Dua in view of US 2008/0236005 A1 (Schlesier)
  • Bell in view of Schlesier
  • Dua in view of US 2013/0145642 A1 (Schwartz)
  • Bell in view of Schwartz
• Institution decision: Instituted on 2019-11-20. The Board found that the petitioner had demonstrated a reasonable likelihood that claims 1-20 are unpatentable under the asserted grounds of obviousness.
• Final Written Decision: Not issued. The proceeding was terminated prior to a Final Written Decision due to settlement.
• Settlement / termination: The proceeding was terminated on 2020-03-23 based on a request for adverse judgment filed by Unified Patents, LLC, which the Board construed as a request for termination due to settlement. The terms of the settlement are confidential.
• Appeal: Not applicable. There was no Final Written Decision to appeal due to the settlement.
• Defensive value: While the IPR was instituted on all challenged claims, no claims were ultimately invalidated by the PTAB. This means a defendant cannot definitively state that claims 1-20 are invalid based on this proceeding. However, the Board's decision to institute indicates a substantive challenge to claims 1-20 based on the cited prior art was deemed plausible.

Strategic summary

All twenty claims (claims 1-20) of US9078488 were challenged in IPR2019-01060. While the PTAB instituted the review, finding a reasonable likelihood of unpatentability for all challenged claims, the proceeding was terminated due to a confidential settlement between Unified Patents, LLC and Nike, Inc. before a Final Written Decision could be rendered. Therefore, technically, all claims (1-20) of US9078488 remain sustained by the PTAB as no final judgment of invalidity was issued.

The estoppel landscape is particularly relevant here. Since the IPR was terminated by settlement, it is possible that statutory estoppel under 35 U.S.C. § 315(e)(2) may not apply to Unified Patents, LLC or its privies in the same way it would if a Final Written Decision on the merits had been issued. However, the specific terms of the settlement agreement would govern any contractual estoppel between the parties. For a new defendant, the prior-art grounds raised in IPR2019-01060 (various obviousness combinations involving Dua, Bell, Schlesier, and Schwartz) are still available for asserting invalidity, as the PTAB did not issue a final ruling on their patentability.

This IPR signals that the patent owner, Nike, Inc., was willing to settle the proceeding. The fact that Unified Patents, a defensive aggregator, was the petitioner indicates a coordinated effort to address potentially problematic patents. The institution decision suggests that there is strong prior art against claims 1-20, even if no official invalidation occurred.

Recommended next steps

The absence of a Final Written Decision means that claims 1-20 were not formally canceled. Therefore, any infringement theory built on these claims still carries weight, but a defendant facing assertion of this patent today could potentially leverage the same prior art and arguments successfully used by Unified Patents to achieve institution. The institution decision (Paper 10 in IPR2019-01060) is available on the USPTO PTAB E2E system and should be thoroughly reviewed for the Board's detailed reasoning regarding the reasonable likelihood of unpatentability of claims 1-20.