PTAB challenges

Proceedings overview

One AIA trial proceeding has been filed against US patent 9561439. This proceeding, IPR2020-01628, was not instituted due to a procedural denial. This means the patent claims have not been challenged on their merits at the PTAB and remain untested by this specific IPR.

IPR2020-01628 — Supercell Oy v. Gree Inc.

• Type: Inter Partes Review
• Filed: 2020-09-15
• Status: Not Instituted - Procedural
• Judge panel: Not publicly available in the provided information.
• Petition grounds: Specific claims and prior art challenged are not publicly available in the provided information, but IPRs typically challenge claims under 35 U.S.C. §§ 102 and/or 103.
• Institution decision: Denied on 2021-02-17. The denial was procedural, meaning the PTAB declined to institute the review based on discretionary factors rather than the merits of the patentability challenge. While the exact reasoning for this specific case is not available in the provided snippets, procedural denials often relate to factors like parallel litigation (e.g., Fintiv factors) or other administrative considerations under 35 U.S.C. § 314(a).
• Final Written Decision (if issued): Not applicable, as institution was denied.
• Settlement / termination: Not applicable.
• Appeal: Not applicable, as institution decisions are generally non-appealable as per Thryv, Inc. v. Click-to-Call Techs, L.P..
• Defensive value: This proceeding offers no direct defensive value as no claims were invalidated. However, it indicates a prior attempt to challenge the patent which was denied on procedural grounds. A defendant would need to understand the specific procedural reason for denial to assess if a new IPR petition could overcome that hurdle.

Strategic summary

All claims of US9561439 remain untested by PTAB proceedings as IPR2020-01628 was denied institution on procedural grounds. No claims have been canceled or sustained through an AIA trial. Therefore, the patent claims are in their original scope and strength as granted by the USPTO.

The estoppel landscape is not impacted by this non-instituted IPR, as 35 U.S.C. § 315(e)(2) estoppel only applies to grounds raised or that reasonably could have been raised in an instituted IPR. Since IPR2020-01628 was denied institution, neither the petitioner (Supercell Oy) nor its privies are estopped from raising the same or new prior-art grounds in future challenges (assuming they meet the time-bar requirements). This means that all prior-art grounds remain available for a defendant currently being asserted against.

A pattern signal observed is that Supercell Oy filed multiple IPRs against Gree Inc. patents on the same date (2020-09-15), with IPR2020-01628 (on US9561439), IPR2020-01633 (on US9079107), and IPR2020-01619 (on US10413832) all resulting in "Not Instituted - Procedural" decisions around February-March 2021. This suggests a concerted effort by Supercell Oy to challenge Gree Inc.'s patents, which was met with procedural denials, potentially due to discretionary factors such as parallel litigation or the Fintiv considerations prevalent around that time.

Recommended next steps

Since there is no active PTAB activity and the sole past proceeding was denied institution on procedural grounds, the claims of US9561439 remain in full force. A defendant facing assertion of this patent should:

• Investigate the specific procedural reason for the denial of IPR2020-01628. This would typically be found in the PTAB's institution decision document. Understanding this reason is crucial to determine if a new IPR petition could be successfully instituted.
• Conduct a thorough prior art search to identify strong grounds for invalidity under 35 U.S.C. §§ 102 and 103, considering the claims of US9561439.
• Evaluate the merits of filing a new IPR petition, ensuring any procedural issues that led to the denial of IPR2020-01628 are addressed and overcome in a new petition. The absence of instituted IPRs means the patent has not been subjected to a full PTAB validity challenge, and the claims are therefore not "hardened."