PTAB challenges

Proceedings overview

There are two inter partes review (IPR) proceedings on file for US Patent 9,251,531, both of which resulted in the invalidation of all challenged claims. This gives a strong defensive posture for a defendant, as the core claims of the patent have been found unpatentable.

IPR2024-00486 — Visa Inc. v. Cortex MCP Inc.

• Type: Inter Partes Review
• Filed: 2024-01-25
• Status: Claims invalidated. The PTAB issued a Final Written Decision finding all challenged claims (1-20) unpatentable. This decision has been appealed to the U.S. Court of Appeals for the Federal Circuit.
• Judge panel: Not publicly available in the provided information.
• Petition grounds: All claims (1-20) were challenged under unspecified prior art and statutory bases (§ 102 / § 103).
• Institution decision: Instituted on 2024-08-02. The panel's reasoning for institution is not detailed in the provided information.
• Final Written Decision: Issued on an unspecified date. The board found all challenged claims (1-20) unpatentable. The specific reasoning for the unpatentability finding is not detailed in the provided information.
• Settlement / termination: No settlement or termination information is provided.
• Appeal: Yes, the Final Written Decision was appealed to the U.S. Court of Appeals for the Federal Circuit (Case No. 26-1259). The issues on appeal are not detailed in the provided information.
• Defensive value: All claims (1-20) of the patent were found unpatentable in this IPR. Any infringement theory built on these claims is significantly weakened, although the outcome of the Federal Circuit appeal is pending.

IPR2024-00487 — Visa Inc. v. Cortex MCP Inc.

• Type: Inter Partes Review
• Filed: Not explicitly stated in the provided information, but filed around the same time as IPR2024-00486.
• Status: Claims invalidated. This case was consolidated with IPR2024-00486, and the Final Written Decision finding claims unpatentable applies to this proceeding as well.
• Judge panel: Not publicly available in the provided information.
• Petition grounds: Not explicitly stated in the provided information, but implicitly challenges claims 1-20 given the consolidation with IPR2024-00486.
• Institution decision: Not explicitly stated as a separate institution, but presumably instituted and consolidated with IPR2024-00486.
• Final Written Decision: The Final Written Decision finding claims 1-20 unpatentable in IPR2024-00486 applies to this consolidated proceeding.
• Settlement / termination: No settlement or termination information is provided.
• Appeal: The appeal to the Federal Circuit (Case No. 26-1259) of the consolidated decision applies to this proceeding.
• Defensive value: Similar to IPR2024-00486, all claims (1-20) of the patent were found unpatentable. This reinforces the defensive position, pending the outcome of the Federal Circuit appeal.

Strategic summary

Both IPR2024-00486 and IPR2024-00487, initiated by Visa Inc., resulted in the PTAB finding all claims (1-20) of US9251531 unpatentable. This means that currently, all claims of the patent are considered CANCELED by the PTAB. No claims were sustained, and no claims remain untested through these IPRs. The patent has been significantly narrowed, effectively removing all its asserted claims as valid, subject to the ongoing Federal Circuit appeal.

The estoppel landscape is critical here. Pursuant to 35 U.S.C. § 315(e)(2), Visa Inc. (and its privies) are estopped from asserting in a civil action or another USPTO proceeding that claims 1-20 are invalid on any ground that was raised or reasonably could have been raised in these IPRs. However, for a defendant who was not a petitioner or privy, the prior art grounds are still available. Given the PTAB's decision, any defendant facing assertion of this patent could leverage the PTAB's findings of unpatentability to argue against infringement.

The pattern signals indicate aggressive defensive action by Visa Inc., filing multiple IPRs that were subsequently consolidated. The patent owner, Cortex MCP Inc., has appealed the PTAB's Final Written Decision to the Federal Circuit, suggesting a strong commitment to defending the patent's validity. There is no information provided about a defensive aggregator like Unified Patents being in the chain for these specific IPRs.

Recommended next steps

If you are a defendant currently facing assertion of this patent, you should immediately review the Final Written Decision from IPR2024-00486 (which consolidated IPR2024-00487) because it found claims 1-20 unpatentable. This decision significantly undermines any infringement theory built upon these claims.

The Federal Circuit appeal (Case No. 26-1259) is ongoing. It is crucial to monitor the progress and outcome of this appeal, as it will determine the ultimate validity of the challenged claims. A reversal by the Federal Circuit would reinstate the claims, while an affirmance would solidify their unpatentability.