PTAB challenges

Proceedings overview

There are two inter partes review (IPR) proceedings on file for US Patent 9,665,705. Both IPRs resulted in the invalidation of all challenged claims, with final written decisions finding claims 1-17 unpatentable. This gives a defendant a strong defensive posture, as the key claims of the patent have been canceled.

IPR2022-01006 — Assa Abloy AB, HID Global Corporation, Allegion PLC, Schlage Lock Company LLC v. Cpc Patent Technologies Pty Ltd

• Type: Inter Partes Review
• Filed: 2022-04-26 (approximate, based on FWD date and statutory timeline)
• Status: Final Written Decision issued on 2023-10-18, finding claims 1-5, 7, and 9-17 of US Patent 9,665,705 unpatentable. Appealed to the Court of Appeals for the Federal Circuit (CAFC Case Number: 25-1078).
• Judge panel: Not publicly available in the provided text.
• Petition grounds: Not publicly available in the provided text, but likely included anticipation (§ 102) and obviousness (§ 103) based on prior art.
• Institution decision: Not publicly available in the provided text, but institution must have occurred for a Final Written Decision to be issued.
• Final Written Decision (if issued): Issued on 2023-10-18, finding claims 1-5, 7, and 9-17 of US Patent 9,665,705 unpatentable.
• Settlement / termination: No indication of settlement.
• Appeal: Yes, Cpc Patent Technologies Pty Ltd appealed this decision to the Court of Appeals for the Federal Circuit. The appeal is pending under CAFC Case Number: 25-1078.
• Defensive value: Claims 1-5, 7, and 9-17 have been found unpatentable by the PTAB. Any infringement theories built on these claims are significantly weakened and likely unassertable if the CAFC upholds the PTAB's decision.

IPR2022-00602 — Assa Abloy AB, HID Global Corporation, Allegion PLC, Schlage Lock Company LLC v. Cpc Patent Technologies Pty Ltd

• Type: Inter Partes Review
• Filed: 2022-03-21 (approximate, based on FWD date and statutory timeline)
• Status: Final Written Decision issued on 2023-07-21, finding claims 1-17 of US Patent 9,665,705 unpatentable. Appealed to the Court of Appeals for the Federal Circuit (CAFC Case Number: 24-1354).
• Judge panel: Not publicly available in the provided text.
• Petition grounds: Not publicly available in the provided text, but likely included anticipation (§ 102) and obviousness (§ 103) based on prior art.
• Institution decision: Not publicly available in the provided text, but institution must have occurred for a Final Written Decision to be issued.
• Final Written Decision (if issued): Issued on 2023-07-21, finding claims 1-17 of US Patent 9,665,705 unpatentable.
• Settlement / termination: No indication of settlement.
• Appeal: Yes, Cpc Patent Technologies Pty Ltd appealed this decision to the Court of Appeals for the Federal Circuit. The appeal is pending under CAFC Case Number: 24-1354.
• Defensive value: All 17 claims of the patent have been found unpatentable by the PTAB. This is a very strong defensive position for any defendant, as the entire patent is at risk of being invalidated upon affirmation by the Federal Circuit.

Strategic summary

Both IPR2022-00602 and IPR2022-01006 resulted in the invalidation of all challenged claims of US Patent 9,665,705. In IPR2022-00602, claims 1-17 were found unpatentable, and in IPR2022-01006, claims 1-5, 7, and 9-17 were found unpatentable. This means that currently, all claims of the patent have been determined to be unpatentable by the PTAB.

The estoppel landscape for petitioners and their privies is significant. Under 35 U.S.C. § 315(e)(2), the petitioners (Assa Abloy AB, HID Global Corporation, Allegion PLC, and Schlage Lock Company LLC) are barred from asserting in future district court or USPTO proceedings any ground of unpatentability that they raised or reasonably could have raised in these IPRs. For other defendants, however, the prior-art grounds used in these IPRs may still be available, although the PTAB's findings provide a strong indication of the claims' vulnerability.

The same petitioners (Assa Abloy AB, HID Global Corporation, Allegion PLC, Schlage Lock Company LLC) filed both IPRs against this patent, indicating a coordinated effort to challenge its validity. The patent owner, Cpc Patent Technologies Pty Ltd, has aggressively pursued PTAB appeals, appealing both adverse Final Written Decisions to the Federal Circuit (CAFC Case Numbers 24-1354 and 25-1078). This suggests a strong commitment by the patent owner to defend the patent, despite the PTAB's rulings.

Recommended next steps

If you are a defendant, the Final Written Decisions from IPR2022-00602 and IPR2022-01006 are highly valuable. The PTAB found claims 1-17 unpatentable in IPR2022-00602. This is a complete invalidation of the patent's claims.

The appeals of both IPRs are currently pending at the Federal Circuit (CAFC Case Numbers 24-1354 and 25-1078). It would be crucial to monitor these appeals for their disposition. A Federal Circuit affirmation of the PTAB's decisions would definitively cancel the claims. Even if the Federal Circuit reverses and remands, the PTAB's reasoning still offers significant insights for defense strategies.