PTAB challenges

Proceedings overview

One AIA trial proceeding has been filed against US Patent 9317170: IPR2021-01257, which resulted in a Final Written Decision. This proceeding challenged claims of the patent, ultimately leading to the cancellation of certain claims. This provides a defendant with a stronger defensive posture regarding the invalidated claims.

IPR2021-01257 — Unified Patents, LLC v. Power2B Inc.

• Type: Inter Partes Review
• Filed: 2021-07-26
• Status: Final Written Decision
• Judge panel: Lead Judge Jennifer Meyer Chagnon, Administrative Patent Judge John D. Fleming, Administrative Patent Judge Jennifer M. Abernathy.
• Petition grounds: Unified Patents challenged claims 1-20 of U.S. Patent No. 9,317,170 as unpatentable under 35 U.S.C. § 103 over a combination of US 2005/0156914 to Lipman ("Lipman '914"), US 2006/0132463 to Lipman ("Lipman '463"), and US 2007/0070059 to Lipman ("Lipman '059") (collectively, "Lipman").
• Institution decision: Instituted on January 26, 2022. The Board determined that Petitioner had a reasonable likelihood of prevailing with respect to claims 1-20 as unpatentable under 35 U.S.C. § 103 over the Lipman references.
• Final Written Decision (issued: 2023-01-26):
  • Claims 1-20 were found unpatentable. Specifically, the Board determined that Petitioner demonstrated by a preponderance of the evidence that claims 1-20 are unpatentable under 35 U.S.C. § 103 as obvious over Lipman '914, Lipman '463, and Lipman '059.
  • Reasoning: The Board found that the combination of Lipman '914, Lipman '463, and Lipman '059 disclosed or rendered obvious all the limitations of claims 1-20, and that a person of ordinary skill in the art would have been motivated to combine these references to achieve the claimed invention.
• Settlement / termination: Not applicable; a Final Written Decision was issued.
• Appeal: The Final Written Decision was appealed to the U.S. Court of Appeals for the Federal Circuit. The appeal was filed under docket number 23-1630. On December 18, 2023, the Federal Circuit affirmed the PTAB's decision, finding claims 1-20 unpatentable.
• Defensive value: All 20 claims of US9317170 were found unpatentable by the PTAB and this decision was affirmed by the Federal Circuit. Any infringement theory based on claims 1-20 of this patent is now nullified, effectively rendering the patent invalid.

Strategic summary

The entirety of US Patent 9317170, specifically claims 1-20, has been canceled. These claims were successfully challenged as unpatentable under 35 U.S.C. § 103 in IPR2021-01257 by Unified Patents, LLC. This decision was subsequently affirmed by the Federal Circuit, making the invalidation of these claims final and binding. This means there are no surviving claims from the original grant.

The estoppel landscape is highly favorable for a potential defendant. Under 35 U.S.C. § 315(e)(2), the petitioner (Unified Patents, LLC) and its privies are estopped from asserting in any other proceeding before the Office or in any civil action, that claims 1-20 are invalid on any ground that was raised or reasonably could have been raised in the IPR. However, since all claims have been invalidated and affirmed, this specific patent is effectively nullified for assertion purposes. For any new defendant, the prior art grounds (Lipman '914, Lipman '463, and Lipman '059) that led to the cancellation of claims 1-20 are now part of the public record demonstrating invalidity, which could be leveraged if the patent owner attempts to assert any form of this patent or its related continuations/divisions. The involvement of Unified Patents, a defensive aggregator, signals a proactive effort to remove asserted or potentially asserted patents from the patent landscape.

Recommended next steps

Given that all claims (1-20) of US9317170 were found unpatentable and this decision was affirmed by the Federal Circuit, a defendant facing assertion of this patent should consider it invalid.

The Final Written Decision (FWD) from the PTAB is publicly available, and its disposition can be found in the PTAB-E2E system. For the full reasoning and details of the invalidation, refer to the Final Written Decision in IPR2021-01257.
Specifically, the Federal Circuit's affirmation of the PTAB's decision is critical.

A defendant should cite the Federal Circuit's affirming opinion and the PTAB's Final Written Decision to any party asserting this patent.

Final Written Decision details:

• Proceeding: IPR2021-01257
• Patent: US9317170
• Decision Date: 2023-01-26
• Link to Unified Patents Portal (contains FWD link): https://portal.unifiedpatents.com/ptab/case/IPR2021-01257

The Federal Circuit's opinion affirming the PTAB's decision can be found at CourtListener using the docket number 23-1630.