PTAB challenges

Proceedings overview

The USPTO Open Data Portal API indicates no AIA trial proceedings on file for US Patent 9087321 as of the most recent ingest. A supplementary web search did not surface any records of Inter Partes Review (IPR), Post-Grant Review (PGR), or Covered Business Method (CBM) proceedings for this patent. This indicates that all 27 claims of US9087321 remain untested by AIA trial proceedings.

Strategic summary

Currently, all 27 claims of US Patent 9087321 are UNTESTED by PTAB proceedings. This means that no claims have been canceled or sustained through IPR, PGR, or CBM trials. For a defendant facing assertion of this patent, this situation presents both opportunities and risks. The absence of PTAB activity implies that the patent has not yet been subjected to the rigor of AIA trials, and the patent owner has not had to defend its claims before the PTAB.

The estoppel landscape is completely open, as there are no previous PTAB final written decisions to trigger estoppel under 35 U.S.C. § 315(e)(2). Therefore, a potential petitioner (or their privies) is not barred from raising any prior-art grounds they choose, including those that could have been raised in a prior proceeding. There is no pattern of the same petitioner filing multiple IPRs on this patent, nor has the patent owner pursued PTAB appeals aggressively, as there are no proceedings to appeal. While the patent owner, Trinity Info Media LLC, is identified as a Non-Practicing Entity (NPE) and has been involved in extensive litigation, no defensive aggregator like Unified Patents has successfully challenged this specific patent at the PTAB, according to available information.

Recommended next steps

Since no PTAB activity exists for US9087321, any defendant being asserted against still has the full range of PTAB trial options (IPR, PGR, CBM, if applicable) available to challenge the patent's validity. The absence of PTAB challenges is unusual for a patent actively asserted by an NPE.

Recommended next steps would include:

• Conducting a thorough prior art search: To identify strong invalidity content that could form the basis of a robust PTAB petition. The "Obviousness" section of the prior analysis, which uses US20090287763A1 and US20120296749A1, could be a starting point, but further art should be sought.
• Evaluating claim eligibility under § 101: As the patent describes software-implemented methods, an analysis of subject matter eligibility under 35 U.S.C. § 101, especially in light of Alice Corp. v. CLS Bank Int'l, would be prudent for a potential PGR or CBM petition, if applicable.
• Assessing potential petitioner estoppel: While no prior PTAB proceedings exist for this specific patent, if the defendant has previously been involved in litigation or PTAB actions against the patent owner on other related patents, a careful review of potential privity or real-party-in-interest issues would be advisable.
• Consider filing an IPR: Given the NPE status of the patent owner and the lack of prior PTAB challenges, an IPR could be a cost-effective strategy to challenge the validity of the claims, especially if strong prior art is found to raise a reasonable likelihood of prevailing.