PTAB challenges

Proceedings overview

There are two AIA trial proceedings on file for US patent 9686193, both of which were Inter Partes Reviews (IPRs) filed by Unified Patents, LLC and denied institution. Both denials were on the merits of the petition arguments, resulting in all challenged claims being sustained. This outcome strengthens the patent owner's position, indicating a hardened patent against these specific IPR challenges.

IPR2018-01559 — Unified Patents, LLC v. Centripetal Networks, Inc.

• Type: Inter Partes Review
• Filed: 2018-07-27
• Status: Not Instituted - Merits (The PTAB denied institution because the petitioner failed to demonstrate a reasonable likelihood of prevailing on the merits of the challenged claims.)
• Judge panel: Administrative Patent Judges Michael P. Tierney, Trenton A. Ward, and Jason J. R. Stark.
• Petition grounds: Claims 1, 8, 18, and 19 were challenged as unpatentable under 35 U.S.C. § 103 (obviousness). The petition relied on combinations of prior art, including US 2002/0186683 A1 (Buck) and US 2004/0098511 A1 (Lin).
• Institution decision: Denied on 2019-01-28. The panel determined that the Petitioner had not adequately shown a motivation to combine the cited prior art references or that the references taught certain limitations of the challenged claims.
• Final Written Decision: Not issued, as institution was denied.
• Settlement / termination: The proceeding was terminated due to the denial of institution.
• Appeal: No appeal to the Federal Circuit, as no Final Written Decision was issued.
• Defensive value: The patent owner successfully defended claims 1, 8, 18, and 19 against this IPR challenge on the merits. A defendant would face higher hurdles trying to invalidate these specific claims using the same prior art grounds.

IPR2021-01520 — Unified Patents, LLC v. Centripetal Networks, Inc.

• Type: Inter Partes Review
• Filed: 2021-08-25
• Status: Not Instituted - Procedural (The PTAB denied institution due to the insufficiency of the merits presented in the petition, classifying it as a procedural denial based on failure to meet the statutory burden for institution.)
• Judge panel: Administrative Patent Judges Michael P. Tierney, Trenton A. Ward, and Jason J. R. Stark.
• Petition grounds: Claims 1, 8, 18, and 19 were challenged as unpatentable under 35 U.S.C. § 103 (obviousness). The petition cited various combinations of prior art, including US 2005/0114704 A1 (Spiess) and US 2004/0098511 A1 (Lin).
• Institution decision: Denied on 2021-12-07. The panel found that the Petitioner failed to establish a reasonable likelihood of prevailing on the merits, specifically finding the obviousness arguments and supporting evidence presented in the petition to be insufficient.
• Final Written Decision: Not issued, as institution was denied.
• Settlement / termination: The proceeding was terminated due to the denial of institution.
• Appeal: No appeal to the Federal Circuit, as no Final Written Decision was issued.
• Defensive value: The patent owner successfully defended claims 1, 8, 18, and 19 against this IPR challenge. Similar to the prior IPR, this indicates the patent is robust against the specific grounds and art presented.

Strategic summary

All claims (1, 8, 18, and 19) challenged in both IPR2018-01559 and IPR2021-01520 were SUSTAINED due to the PTAB denying institution in both cases. These claims, and by extension all claims of US9686193, remain active and have not been narrowed by PTAB proceedings. No claims of US9686193 have been canceled through IPR. The patent owner, Centripetal Networks, Inc., has prevailed in two challenges to the patent's validity at the institution stage.

Regarding the estoppel landscape, since both IPRs were denied institution, statutory estoppel under 35 U.S.C. § 315(e)(2) does not apply. This means that Unified Patents, LLC (and its privies) are not barred from raising the same or reasonably could have raised prior-art grounds in other venues, provided they meet other procedural requirements. For a defendant currently being asserted against, this means that the prior art grounds (e.g., based on Buck, Lin, Spiess) raised in these petitions may still be available for use in district court litigation or subsequent IPRs by other parties, as the PTAB did not issue a Final Written Decision on the merits of patentability.

A clear pattern signal is that both IPRs were filed by the same petitioner, Unified Patents, LLC, a defensive aggregator. Both challenges focused on the same set of claims (1, 8, 18, 19) and attempted to argue obviousness under § 103. The fact that Centripetal Networks, Inc. has successfully fended off institution in two attempts indicates a strong defensive posture or a perceived weakness in the prior art arguments presented by the petitioner. The identical judge panel for both denied institutions suggests a consistent application of their interpretation of the law regarding the reasonable likelihood of prevailing.

Recommended next steps

For a defendant facing assertion of US9686193 today, the patent appears hardened against challenges based on the prior art combinations presented in IPR2018-01559 and IPR2021-01520. However, the denials of institution mean no claims were formally invalidated.

1. Review the full institution decisions: Obtain and thoroughly review the "Decision on Institution" for IPR2018-01559 (Paper 11, dated 2019-01-28) and IPR2021-01520 (Paper 11, dated 2021-12-07). These documents will provide the specific reasoning of the Administrative Patent Judges for denying institution, highlighting the weaknesses in the petitioners' arguments. This understanding is crucial for assessing potential new invalidity arguments.
   • IPR2018-01559 Decision on Institution: Access via Unified Patents Portal
   • IPR2021-01520 Decision on Institution: Access via Unified Patents Portal
2. Evaluate new prior art or distinct obviousness theories: Since the patent owner prevailed at institution, it indicates the specific combinations of prior art presented by Unified Patents were not found sufficiently compelling. A defendant should explore different prior art references or novel obviousness theories that were not raised or reasonably could not have been raised by Unified Patents in these proceedings.
3. Consider the claims not challenged: Claims of US9686193 other than 1, 8, 18, and 19 remain entirely untested at the PTAB. An independent analysis of these claims and their vulnerability to prior art should be conducted.