PTAB challenges

Proceedings overview

As of the current date, one AIA trial proceeding, IPR2023-01056, has been filed against US Patent 9,991,030. This proceeding is complete, having reached a Final Written Decision where all challenged claims were determined to be unpatentable. This provides a strong defensive posture for a defendant, as the core claims of the patent have been invalidated.

IPR2023-01056 — Unified Patents LLC v. Belden Inc.

• Type: Inter Partes Review
• Filed: 2023-06-13
• Status: Final Written Decision issued, all challenged claims found unpatentable.
• Judge panel: Michael P. Tierney, Grace J. Yang, Michael Kim
• Petition grounds: Claims 1-17 were challenged as unpatentable under 35 U.S.C. § 103(a) over various combinations of prior art, specifically:
  • Claims 1-17 challenged over US 2012/0222883 (General Cable) in view of US 2012/0227998 (Lindstrom).
  • Claims 1-17 challenged over General Cable in view of US 6,812,408 (Cable Design Technologies).
• Institution decision: The PTAB instituted review of claims 1-17 under 35 U.S.C. § 103(a) based on the combinations of General Cable with Lindstrom, and General Cable with Cable Design Technologies. The institution decision was issued on December 14, 2023.
• Final Written Decision: Issued on December 13, 2024. All challenged claims, specifically claims 1-17, were found unpatentable. The panel determined that the Petitioner had demonstrated by a preponderance of the evidence that claims 1-17 are unpatentable under 35 U.S.C. § 103(a) as obvious over the cited prior art.
• Settlement / termination: Not applicable, as a Final Written Decision was issued.
• Appeal: The Final Written Decision was appealed to the Federal Circuit. The Federal Circuit case number is 25-1428.
• Defensive value: The Final Written Decision finding claims 1-17 unpatentable significantly weakens the patent. Any assertion of these claims, which comprise all of the original claims and encompass the core inventive concepts, is now highly vulnerable and potentially subject to sanctions given the PTAB's decision.

Strategic summary

Claims 1-17 of US Patent 9,991,030 have been CANCELED by the Final Written Decision in IPR2023-01056. This means that all original claims of the patent have been determined to be unpatentable. There are no remaining claims that have been explicitly sustained or left untested by this proceeding. The patent has been largely gutted from a defensive standpoint.

The estoppel landscape is now very favorable for defendants. Under 35 U.S.C. § 315(e)(2), the petitioner (Unified Patents LLC) and its privies are estopped from asserting in district court or the ITC that claims 1-17 are invalid on any ground that Unified Patents raised or reasonably could have raised during the IPR. However, for other defendants, the prior art grounds used to invalidate claims 1-17 are now confirmed by a PTAB decision, providing strong evidence against validity.

The pattern signals indicate that Unified Patents, a defensive aggregator, successfully challenged the patent. The patent owner, Belden Inc., has appealed the decision to the Federal Circuit, indicating a continued effort to defend the patent. The outcome of this appeal will be critical to the ultimate enforceability of the patent.

Recommended next steps

If you are a defendant facing assertion of US Patent 9,991,030, the PTAB's Final Written Decision in IPR2023-01056 is highly beneficial. All claims that were challenged (claims 1-17) were found unpatentable. The disposition of the FWD states that "For the foregoing reasons, we determine that Petitioner has demonstrated by a preponderance of the evidence that claims 1–17 are unpatentable under 35 U.S.C. § 103(a)." This means any infringement theory relying on these claims is built on a foundation of unpatentability.

The full Final Written Decision for IPR2023-01056 can be found on the USPTO PTAB Decisions portal or by searching IPR2023-01056. The appeal to the Federal Circuit (docket 25-1428) is ongoing and its outcome will determine the final legal status of these claims. Monitoring the Federal Circuit appeal is a critical next step.