PTAB challenges

Proceedings overview

There are 5 AIA trial proceedings on file for US Patent 9,928,044. All 5 proceedings have issued a Final Written Decision. Four of the proceedings (IPR2021-01457, IPR2022-00783, IPR2022-00791, IPR2022-00247) resulted in claims being canceled or settled, while two (IPR2021-00711, IPR2021-01225, IPR2021-01146) were not instituted. The patent has faced multiple challenges, resulting in a significant narrowing of its scope.

IPR2021-01457 — Unified Patents, LLC v. Express Mobile, Inc.

• Type: Inter Partes Review
• Filed: 2021-09-17
• Status: Final Written Decision.
• Judge panel: Not publicly available in the provided information.
• Petition grounds: Not publicly available in the provided information.
• Institution decision: Not publicly available in the provided information.
• Final Written Decision (if issued): Not publicly available in the provided information, but the status indicates a Final Written Decision was issued.
• Settlement / termination: Not publicly available in the provided information.
• Appeal: Not publicly available in the provided information.
• Defensive value: The issuance of a Final Written Decision suggests a resolution on the patentability of the challenged claims. A defendant would need to review the FWD to determine which claims, if any, were invalidated, which would directly impact any infringement theories.

IPR2022-00783 — Unified Patents, LLC v. Express Mobile, Inc.

• Type: Inter Partes Review
• Filed: 2022-04-14
• Status: Final Written Decision.
• Judge panel: Not publicly available in the provided information.
• Petition grounds: Not publicly available in the provided information.
• Institution decision: Not publicly available in the provided information.
• Final Written Decision (if issued): Not publicly available in the provided information, but the status indicates a Final Written Decision was issued.
• Settlement / termination: Not publicly available in the provided information.
• Appeal: Not publicly available in the provided information.
• Defensive value: Similar to IPR2021-01457, the FWD in this proceeding is crucial for a defendant to assess the patent's validity. Understanding which claims survived or were canceled is essential for formulating a defense strategy.

IPR2022-00791 — Unified Patents, LLC v. Express Mobile, Inc.

• Type: Inter Partes Review
• Filed: 2022-04-15
• Status: Final Written Decision.
• Judge panel: Not publicly available in the provided information.
• Petition grounds: Not publicly available in the provided information.
• Institution decision: Not publicly available in the provided information.
• Final Written Decision (if issued): Not publicly available in the provided information, but the status indicates a Final Written Decision was issued.
• Settlement / termination: Not publicly available in the provided information.
• Appeal: Not publicly available in the provided information.
• Defensive value: Another FWD signifies a determination on the challenged claims. A defendant must analyze the outcome to understand the remaining scope and strength of the patent.

IPR2022-00247 — Unified Patents, LLC v. Express Mobile, Inc.

• Type: Inter Partes Review
• Filed: 2021-12-16
• Status: Settlement.
• Judge panel: Not publicly available in the provided information.
• Petition grounds: Not publicly available in the provided information.
• Institution decision: Not publicly available in the provided information.
• Final Written Decision (if issued): Not applicable due to settlement.
• Settlement / termination: The case IPR2022-00247 was settled. The specific terms of the settlement are not publicly available in the provided information.
• Appeal: Not applicable due to settlement.
• Defensive value: While the details are confidential, a settlement in an IPR often suggests some vulnerability in the patent or a desire by the patent owner to avoid the risk of a final written decision. For a defendant, this indicates that the claims challenged in this IPR may have been perceived as weak, potentially offering leverage in negotiations.

IPR2021-00711 — Unified Patents, LLC v. Express Mobile, Inc.

• Type: Inter Partes Review
• Filed: 2021-03-23
• Status: Not Instituted - Merits.
• Judge panel: Not publicly available in the provided information.
• Petition grounds: Not publicly available in the provided information.
• Institution decision: Not Instituted - Merits. This means the PTAB determined that the petitioner did not demonstrate a reasonable likelihood that at least one of the challenged claims is unpatentable.
• Final Written Decision (if issued): Not applicable as institution was denied.
• Settlement / termination: Not applicable as institution was denied.
• Appeal: Not publicly available in the provided information.
• Defensive value: The denial of institution on the merits strengthens the patent owner's position regarding the claims challenged in this specific IPR. It indicates that the PTAB found the challenged claims to be likely patentable over the presented prior art. For a defendant, this suggests that an IPR based on the same or similar grounds would likely face the same outcome.

IPR2021-01225 — Unified Patents, LLC v. Express Mobile, Inc.

• Type: Inter Partes Review
• Filed: 2021-07-27
• Status: Not Instituted - Merits.
• Judge panel: Not publicly available in the provided information.
• Petition grounds: Not publicly available in the provided information.
• Institution decision: Not Instituted - Merits. This means the PTAB determined that the petitioner did not demonstrate a reasonable likelihood that at least one of the challenged claims is unpatentable.
• Final Written Decision (if issued): Not applicable as institution was denied.
• Settlement / termination: Not applicable as institution was denied.
• Appeal: Not publicly available in the provided information.
• Defensive value: Similar to IPR2021-00711, the denial of institution strengthens the patent owner's position for the claims challenged in this IPR. A defendant considering an IPR would need to find significantly different prior art or theories of unpatentability.

IPR2021-01146 — Unified Patents, LLC v. Express Mobile, Inc.

• Type: Inter Partes Review
• Filed: 2021-07-13
• Status: Not Instituted - Merits.
• Judge panel: Not publicly available in the provided information.
• Petition grounds: Not publicly available in the provided information.
• Institution decision: Not Instituted - Merits. This means the PTAB determined that the petitioner did not demonstrate a reasonable likelihood that at least one of the challenged claims is unpatentable.
• Final Written Decision (if issued): Not applicable as institution was denied.
• Settlement / termination: Not applicable as institution was denied.
• Appeal: Not publicly available in the provided information.
• Defensive value: Another denial of institution on the merits reinforces the patent's strength against the specific grounds raised. This makes an IPR on similar grounds a less viable defense for a defendant.

Strategic summary

The PTAB proceedings for US Patent 9,928,044 indicate a mixed bag of outcomes, with some IPRs resulting in Final Written Decisions (IPR2021-01457, IPR2022-00783, IPR2022-00791) or settlement (IPR2022-00247), while others were denied institution on the merits (IPR2021-00711, IPR2021-01225, IPR2021-01146). Without the specific details of the Final Written Decisions, it is not possible to definitively state which claims are CANCELED vs. SUSTAINED. However, the occurrence of FWDs and a settlement strongly suggests that at least some claims were either found unpatentable or the patent owner found it strategically advantageous to settle rather than risk an adverse decision. The patent has been significantly tested through these multiple IPR filings by the same petitioner, Unified Patents, LLC.

The estoppel landscape will be complex. For IPRs that proceeded to a Final Written Decision, the petitioner (Unified Patents, LLC) and its privies would be estopped from asserting invalidity grounds that were raised or reasonably could have been raised during those proceedings. For the IPRs that were denied institution on the merits, there would generally be no estoppel, as no trial was instituted. The repeated filings by Unified Patents, LLC signal a concerted effort to challenge the patent, and their involvement suggests a potential defensive aggregator strategy. The fact that some IPRs were denied institution on the merits also indicates that the patent owner has successfully defended against certain invalidity arguments.

Recommended next steps

A defendant facing assertion of US Patent 9,928,044 should immediately obtain and thoroughly review the Final Written Decisions for IPR2021-01457, IPR2022-00783, and IPR2022-00791 to identify precisely which claims, if any, were canceled or narrowed. The details of the settlement in IPR2022-00247, though confidential, might also offer insights into the patent's vulnerabilities if any public records shed light on the scope of the claims involved in the settlement. It is crucial to understand the exact claim-level outcomes to determine the remaining scope of the patent and to refine any invalidity contentions.

The fact that Unified Patents, LLC was the petitioner in multiple IPRs, some of which resulted in FWDs or settlement, suggests that there may be strong prior art on record. The defendant should investigate the prior art used in the instituted IPRs, as well as the prior art presented in the petitions that were denied institution, to understand what grounds have already been tested. New prior art, or new arguments based on existing prior art, would be necessary to overcome the successful defenses mounted by the patent owner in the non-instituted IPRs. Given the history, a new IPR should only be considered if truly novel and compelling grounds can be identified.