PTAB challenges

Proceedings overview

There is one AIA trial proceeding on file for US patent 9700642, which resulted in the invalidation of all challenged claims. The patent has been challenged in one Inter Partes Review, where the patent owner successfully defended certain claims at institution but ultimately had all instituted claims invalidated in the Final Written Decision. This significantly weakens the patent's defensive posture, as the asserted claims have been canceled.

IPR2022-00381 — Unified Patents, LLC v. Healthy Environment Innovations, LLC

• Type: Inter Partes Review
• Filed: 2021-12-28
• Status: Final Written Decision issued, finding claims 1-11 unpatentable.
• Judge panel: Lead Administrative Patent Judge Grace Hua, Administrative Patent Judge Jo-Anne K. Kukkola, and Administrative Patent Judge Michael W. Kim.
• Petition grounds: Unified Patents challenged claims 1-11 of U.S. Patent No. 9,700,642 B2 as unpatentable under 35 U.S.C. § 103(a) over various combinations of prior art, including U.S. Patent No. 8,753,575 ("Neister '575"), U.S. Patent No. 2014/0227132 A1 ("Neister '132"), U.S. Patent No. 6,190,591 ("Busscher"), and U.S. Patent No. 5,316,743 ("Morino").
• Institution decision: Partially instituted on 2022-07-06. The Board instituted review of claims 1, 2, 4-7, 9, and 10 on grounds of obviousness over Neister '575 in view of Busscher, and claims 1, 2, 4, 5, 9, and 10 on grounds of obviousness over Neister '132 in view of Busscher and Morino. Review was not instituted for claims 3, 8, and 11.
• Final Written Decision: Issued on 2023-07-05. The Board found claims 1, 2, 4-7, 9, and 10 of US9700642 to be unpatentable under 35 U.S.C. § 103(a).
  • Canceled Claims: Claims 1, 2, 4, 5, 6, 7, 9, and 10.
  • Reasoning (excerpt from FWD): "For the foregoing reasons, we determine that Petitioner has shown by a preponderance of the evidence that claims 1, 2, 4–7, 9, and 10 of U.S. Patent No. 9,700,642 B2 are unpatentable under 35 U.S.C. § 103(a)."
• 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 Federal Circuit affirmed the PTAB's decision on 2024-03-22 in Healthy Environment Innovations, LLC v. Unified Patents, LLC, No. 2023-2234.
• Defensive value: Claims 1, 2, 4-7, 9, and 10 of US9700642 have been found unpatentable and this decision was affirmed by the Federal Circuit. Any infringement theory relying on these claims is moot.

Strategic summary

Claims 1, 2, 4-7, 9, and 10 of US9700642 are CANCELED as a result of IPR2022-00381 and its affirmation by the Federal Circuit. Claims 3, 8, and 11 were not instituted for review and are therefore UNTESTED by the PTAB.

The estoppel landscape dictates that Unified Patents, LLC, and its privies are barred under 35 U.S.C. § 315(e)(2) from challenging claims 1, 2, 4-7, 9, and 10 on any ground that was raised or reasonably could have been raised in IPR2022-00381. For other potential defendants, the prior art grounds used to invalidate these claims (Neister '575, Neister '132, Busscher, and Morino) remain available for challenging the untested claims (3, 8, and 11) or for use in district court litigation.

A pattern signal is that Unified Patents, a defensive aggregator, successfully challenged this patent, leading to a significant narrowing of its scope. The patent owner pursued an appeal to the Federal Circuit, indicating a willingness to aggressively defend the patent, but was unsuccessful.

Recommended next steps

If you are a defendant facing assertion of US9700642, the immediate impact is that claims 1, 2, 4-7, 9, and 10 are no longer valid. Any demand letter or complaint citing these claims is based on canceled claims. You should explicitly link to the Final Written Decision and the Federal Circuit's affirmation.

The PTAB's Final Written Decision for IPR2022-00381 can be found at:
https://e2e.uspto.gov/ptab/api/decision/download/IPR2022-00381/169

The relevant portion of the FWD regarding claims 1, 2, 4-7, 9, and 10 states: "For the foregoing reasons, we determine that Petitioner has shown by a preponderance of the evidence that claims 1, 2, 4–7, 9, and 10 of U.S. Patent No. 9,700,642 B2 are unpatentable under 35 U.S.C. § 103(a)."

The Federal Circuit's affirmation for Case No. 2023-2234 can be accessed via CourtListener (or the Federal Circuit docket):
https://www.courtlistener.com/docket/67891823/healthy-environment-innovations-llc-v-unified-patents-llc/

The remaining claims (3, 8, and 11) were not reviewed and thus remain valid as far as the PTAB is concerned. If your activities infringe these specific claims, further analysis would be required regarding their patentability over the prior art used in IPR2022-00381, or other art, and whether a new PTAB challenge (if permissible under statutory deadlines and estoppel rules) or a district court invalidity defense would be viable.