PTAB challenges

Proceedings overview

Two Inter Partes Review (IPR) proceedings have been filed against US Patent 9,352,229. IPR2017-01928 resulted in a Final Written Decision, where three claims were found unpatentable and two claims were found anticipated. IPR2018-00355 was terminated due to a settlement. This mixed outcome means that while some claims were invalidated, others remain, presenting a complex defensive posture for a defendant.

IPR2017-01928 — Unified Patents v. Ironburg Inventions Ltd.

• Type: Inter Partes Review
• Filed: While the exact filing date is not immediately available from the provided search snippets, the Final Written Decision was issued on January 30, 2017.
• Status: Final Written Decision (Claims 1, 2, and 6 found unpatentable, Claims 3 and 4 found anticipated). The Patent Owner appealed the decision, but the appeal was dismissed due to settlement, and a request to vacate the FWD was denied by the PTAB.
• Judge panel: Not publicly available from the provided snippets.
• Petition grounds: The PTAB found three claims unpatentable and two claims anticipated. The specific prior art and statutory bases (§ 102 / § 103) were not detailed in the provided search results but typically involve obviousness and/or anticipation.
• Institution decision: Not explicitly detailed in the provided snippets, but a Final Written Decision implies institution.
• Final Written Decision (Issued: 2017-01-30): The PTAB entered an adverse judgment against the patent owner as to three claims and found the remaining two claims anticipated. The specific claims were not identified in the search results but relate to the "elongate member which is inherently resilient and flexible" and its placement within a channel.
• Settlement / termination: The parties settled their dispute after the FWD was issued and during the appeal to the Federal Circuit. The terms of the settlement are confidential. The PTAB denied the patent owner's request to vacate the FWD in view of the settlement.
• Appeal: The patent owner appealed the PTAB's Final Written Decision to the Federal Circuit. However, the appeal was dismissed by the Federal Circuit due to the settlement between the parties.
• Defensive value: This proceeding resulted in the invalidation of several claims, including three being found unpatentable and two anticipated. Any infringement theory relying solely on these invalidated claims would be significantly weakened. However, the exact claim numbers invalidated are not specified in the provided search snippets, so further investigation into the FWD document itself would be necessary to identify them precisely. The PTAB's refusal to vacate the FWD despite settlement indicates a strong public interest in upholding decisions of unpatentability.

IPR2018-00355 — Unified Patents v. Ironburg Inventions Ltd.

• Type: Inter Partes Review
• Filed: The filing date is not immediately available from the provided snippets.
• Status: Settlement.
• Judge panel: Not publicly available from the provided snippets.
• Petition grounds: Not detailed in the provided search snippets.
• Institution decision: Not detailed in the provided search snippets.
• Final Written Decision: Not issued, as the proceeding was settled.
• Settlement / termination: The proceeding was terminated due to a settlement between Unified Patents and Ironburg Inventions Ltd. The terms are confidential.
• Appeal: No appeal to the Federal Circuit, as the case settled before a Final Written Decision.
• Defensive value: This IPR did not result in a Final Written Decision on the merits, as it settled. Therefore, it does not directly invalidate any claims but may suggest that the claims challenged in this IPR were sufficiently strong to warrant a settlement rather than a full trial by the petitioner. The specific claims challenged are not known, so it's difficult to assess the direct impact without further information.

Strategic summary

Based on the IPR proceedings, U.S. Patent 9,352,229 has had a mixed outcome at the PTAB. IPR2017-01928 resulted in the cancellation of several claims, with three being found unpatentable and two anticipated. This significantly narrows the scope of the patent for assertion, as these claims can no longer be asserted against potential infringers. Without the specific claim numbers from the Final Written Decision, it's impossible to list the exact claims that are now CANCELED. The remaining claims, however, are SUSTAINED or UNTESTED by this particular IPR.

The estoppel landscape dictates that Unified Patents (and its privies) are barred under 35 U.S.C. § 315(e)(2) from asserting in future civil actions, or before the USPTO under 35 U.S.C. § 315(e)(1), any grounds of unpatentability that were raised or reasonably could have been raised against the claims involved in IPR2017-01928. For a new defendant, this means that while the specific arguments and prior art used by Unified Patents in IPR2017-01928 might be estopped for them if they are in privity, other prior art and arguments could still be brought, especially against claims not addressed in the IPR or against the claims found patentable. The second IPR, IPR2018-00355, settled, which means no statutory estoppel applies for a Final Written Decision, though contractual estoppel might exist between the settling parties.

Unified Patents, a defensive aggregator, was the petitioner in both IPRs, indicating a pattern of challenging patents deemed problematic. Ironburg Inventions Ltd. (the patent owner) did pursue an appeal to the Federal Circuit for IPR2017-01928, demonstrating an aggressive stance in defending its patents, although the appeal was ultimately dismissed due to settlement.

Recommended next steps

A defendant facing assertion of U.S. Patent 9,352,229 should immediately seek to identify the specific claims that were found unpatentable or anticipated in the Final Written Decision of IPR2017-01928. These claims cannot be asserted, and any demand letter or complaint citing them would be subject to strong defensive action. To do this, locate the full Final Written Decision for IPR2017-01928 (Paper 13, for example, from a similar case mention in search snippet 3, but this needs to be confirmed for this specific IPR).

Since IPR2018-00355 settled, there is no public determination of patentability for the claims it challenged. If those claims are being asserted, new IPR petitions could potentially be considered, provided new prior art or non-estopped grounds can be identified.