PTAB challenges

Proceedings overview

There are two AIA trial proceedings on file for US Patent 9,289,688, both being Inter Partes Reviews (IPRs). One IPR resulted in a partial invalidation of claims, with the outcome of certain remaining dependent claims still pending after multiple Federal Circuit remands. The other IPR was terminated due to settlement. This gives a defendant a mixed defensive posture: some claims have been canceled, making infringement theories built on them vulnerable, while others remain subject to ongoing validity challenges.

IPR2017-00858 — Valve Corporation v. Ironburg Inventions Ltd.

• Type: Inter Partes Review
• Filed: 2017-02-07
• Status: Claims 1, 2, 9, 10, 20, 22, 27, 28, and 30 were found unpatentable as anticipated by Uy. Claims 18, 19, 21, 26, and 29 were initially deemed not unpatentable by the PTAB, but this decision has been vacated and remanded by the Federal Circuit for further consideration of obviousness.
• Judge panel: Not publicly detailed in the search results for specific panel members, though Judge Dyk authored the CAFC opinion for the appeals.
• Petition grounds: Claims 1-3, 9, 10, 18-22, and 26-30 were challenged. The grounds included anticipation by U.S. Patent Application Publication No. 2015/0238855 ("Uy") and obviousness over the "Burns article" in combination with other references (e.g., LaCelle).
• Institution decision: The PTAB instituted review. The exact date and specific reasoning for institution on each ground are not detailed in the provided search results, beyond the claims challenged.
• Final Written Decision (if issued): The PTAB initially determined that claims 1, 2, 9, 10, 20, 22, 27, 28, and 30 were unpatentable as anticipated by Uy. The PTAB initially found dependent claims 18, 19, 21, 26, and 29 not unpatentable. The Board's reasoning for upholding the dependent claims was based on its conclusion that claim 1 was not shown to be unpatentable over Burns and LaCelle, a position later criticized by the Federal Circuit.
• Appeal: Yes, the Final Written Decision was appealed to the Federal Circuit twice.
  • First Appeal (Valve I): Docket No. 20-1315 (Fed. Cir. August 17, 2021). The Federal Circuit affirmed in part, reversed in part, vacated in part, and remanded the case. Crucially, the court reversed the PTAB's finding that the "Burns article" was not prior art, and affirmed the PTAB's determination that independent claim 1 was unpatentable as anticipated. The case was remanded for the Board to determine whether the dependent claims were obvious in light of Burns.
  • Second Appeal (Valve II): Docket No. 23-1725 (Fed. Cir. April 23, 2025). The Federal Circuit again vacated the Board's remand decision and remanded for a second time. The court found the PTAB's approach on remand inconsistent with its mandate in Valve I and issue preclusion, as the Board continued to consider claim 1 "at issue" despite its unpatentability being affirmed. The Federal Circuit instructed the PTAB to recognize claim 1 as unpatentable and then determine whether the dependent claims (18, 19, 21, 26, and 29) were patentably indistinct from claim 1, and to resolve factual disputes regarding motivation to combine Burns and LaCelle.
• Defensive value: Independent claim 1 is confirmed unpatentable, which significantly weakens any infringement theories solely reliant on it. Several other claims (2, 9, 10, 20, 22, 27, 28, 30) were also invalidated. The validity of dependent claims 18, 19, 21, 26, and 29 remains in flux, but the Federal Circuit's repeated remands indicate a strong challenge to their patentability.

IPR2018-00357 — Collective Minds Gaming Co. Ltd. v. Ironburg Inventions Ltd.

• Type: Inter Partes Review
• Filed: 2018-01-03
• Status: Settlement (terminated without a Final Written Decision).
• Judge panel: Not publicly available.
• Petition grounds: Not explicitly detailed in the provided search results, but it would have challenged specific claims of the '688 patent under § 102 and/or § 103 using various prior art.
• Institution decision: The decision on institution was entered on June 14, 2018.
• Final Written Decision (if issued): Not issued.
• Settlement / termination: The proceeding was terminated without a Final Written Decision pursuant to a joint request by the petitioner and patent owner. The parties informed the Board of their agreement to terminate in writing, and the motion was granted on November 8, 2018. The specific terms of the settlement are confidential.
• Appeal: No appeal was made to the Federal Circuit as the case was settled prior to a Final Written Decision.
• Defensive value: This IPR did not result in a final judgment on the merits of patentability, so it doesn't directly invalidate claims. However, the settlement suggests that Collective Minds Gaming Co. Ltd. reached an agreement with Ironburg, which may include licensing or other terms that could impact their ability to assert certain prior art in future disputes. Estoppel under 35 U.S.C. § 315(e)(2) applies to petitioners and their privies for grounds raised or reasonably could have raised, even in a settled IPR after institution.

Strategic summary

Claims 1, 2, 9, 10, 20, 22, 27, 28, and 30 of US Patent 9,289,688 have been CANCELED as anticipated by the Uy reference, a decision affirmed by the Federal Circuit. This significantly narrows the scope of the patent. Dependent claims 18, 19, 21, 26, and 29 are currently in a state of UNTESTED patentability, as the Federal Circuit has twice remanded their obviousness determination back to the PTAB. These claims were found not unpatentable by the PTAB in their first remand decision, but this finding was vacated due to the PTAB's erroneous approach in re-evaluating claim 1's obviousness. The Federal Circuit explicitly directed the PTAB to consider claim 1 unpatentable and re-evaluate the dependent claims' obviousness accordingly.

Regarding the estoppel landscape, Valve Corporation, as the petitioner in IPR2017-00858, and its privies are estopped from raising any ground that was raised or reasonably could have been raised in that IPR against claims 1-3, 9, 10, 18-22, and 26-30. This includes arguments of anticipation by Uy and obviousness in light of the "Burns article" in combination with other references. For a defendant currently being asserted against, this means that while claims 1, 2, 9, 10, 20, 22, 27, 28, and 30 are confirmed invalid, any new challenges to the surviving claims (18, 19, 21, 26, and 29) by Valve or its privies must rely on different prior art or different grounds. Collective Minds Gaming Co. Ltd. also settled an IPR (IPR2018-00357), which similarly triggers estoppel for claims challenged therein.

Ironburg Inventions Ltd. has aggressively pursued PTAB appeals, as evidenced by the multiple Federal Circuit appeals in IPR2017-00858, and has generally sought to defend the patent's validity. There is no indication of a defensive aggregator like Unified Patents in the chain of ownership.

Recommended next steps

If you are a defendant facing assertion of US Patent 9,289,688 today, you should immediately note that claims 1, 2, 9, 10, 20, 22, 27, 28, and 30 have been found unpatentable as anticipated by Uy. This finding was affirmed by the Federal Circuit, making these claims effectively canceled. Any infringement theory built on these specific claims is significantly weakened.

The validity of dependent claims 18, 19, 21, 26, and 29 is currently subject to a second remand to the PTAB. This means these claims are still under active challenge and their ultimate patentability is uncertain.

Refer to the Federal Circuit's opinion in Valve Corp. v. Ironburg Inventions Ltd., Case No. 23-1725, decided April 23, 2025, for the latest instructions to the PTAB regarding these dependent claims:
"We vacate and remand the Board's decision for further proceedings consistent with this opinion."
The court further stated that "the Board was required to recognize claim 1 as unpatentable and then determine whether the dependent claims were patentably indistinct from claim 1."
This indicates a strong possibility that some or all of the remaining dependent claims may also be found unpatentable upon further review by the PTAB.