PTAB Uses Discretion, Fintiv to Deny Petitions 38% in 2021 to Date

2021 is current through September 8, 2021

2021 is current through September 8, 2021

Institution decisions are generally down in 2021 to date, compared to previous years. Nonetheless, the USPTO’s use of procedural denials rivals last year’s. In 2020, nearly 19% of all institution decisions were denied procedurally, whereas this year, over 16% are denied—over 144 of the 377 denials to date have been denied under the Board’s discretion. In other words, almost 40% of all denials this year have been non-substantive.

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A total of 105 decisions were made on the basis 314(a) and 31 decisions were made on the basis of 325(a). The 105 314(a) denials accounts for 73% of all denials. That is, compared to 2019 in total, no change—in 2019, 314(a) denials accounted for roughly 73% as well.

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Over 94% of all procedural denials this year stem from either 314(a) or 325(d). In 2020, 88.5% of denials stemmed from these from 314(a) or 325(d). This year has seen a 5.5% increase from last year.

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Section 314(a) denials are now used by the Board roughly 12.4% of the time, an 0.2% increase from last quarter.

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Meanwhile, 325(d) denials have slightly increased to 5.7% from the year-over-year average of 5%.

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NHK Spring/Fintiv continues to be the dominant framework of 314(a) denials. This year has seen 77, nearly reaching the previous-year high of 85. NHK Spring/Fitniv accounts for 73% of all 314(a), whereas in 2020 only 51% were based on the Fintiv framework. This is a 23% increase from last year.

Ideahub patent held unpatentable

On September 16, 2021, the Patent Trial and Appeal Board (PTAB) issued a final written decision in Unified Patents, LLC v. Ideahub Inc. holding all challenged claims of U.S. Patent 9,641,849 invalid and denied the motion to amend. The IPR was filed as part of Unified's ongoing efforts in its SEP Video Codec Zone. The '849 patent relates to a video compression technique known as intra prediction.

The '849 patent is a part of the Access Advance patent pool. Access Advance claims that certain claims of the '849 patent are essential to the HEVC standard.

Unified is represented by Raghav Bajaj, David McCombs, and Jon Bowser from Haynes and Boone, and by in-house counsel, Roshan Mansinghani and Ashraf Fawzy, in this proceeding. Visit Unified’s Portal for more information about its Video Codec landscape (OPAL) and standard submission repository (OPEN). To read the petition and review the case record, view IPR2020-00702 on Unified’s Portal.

$2,000 for Consumeron prior art

On September 9, 2021, Unified Patents added a new PATROLL contest, with a $2,000 cash prize, seeking prior art on at least claim 1 of U.S. Patent 10,115,067, owned by Consumeron, LLC, an NPE. The '067 patent relates to a method for remote acquisition and delivery of goods involving a server in communication with a customer’s computer through a user interface via the Internet. The patent has been asserted against MapleBear Inc. d/b/a Instacart.

The contest will expire on December 15, 2021. Please visit PATROLL for more information and to submit an entry for this contest.

Prior Art ProviderClaim Chart Link
Apex StandardsPseudo Claim Charting
Techson IPLimestone|Report
Amplified Invalidity Report
Traindex Prior Art Report
InQuartik Semantic Prior Art
Ambercite Similar Prior Art
IPscreener Relevant Prior Art
Google Similar Documents - Patents
Google Similar Documents - NPL
Unified Portal Relevant Prior Art

$2,000 for prior art on U.S. Patent 9,245,295

On September 9, 2021, Unified Patents added a new PATROLL contest, with a $2,000 cash prize, seeking prior art on at least claim 1 of U.S. Patent 9,245,295, associated with Vitek IP, LLC. The '295 patent generally relates to a call-to-action lockout on a mobile device coupled to a data network. The invention has been developed primarily for controlling responses while experiencing media content on mobile electronic devices.

The contest will expire on December 15, 2021. Please visit PATROLL for more information and to submit an entry for this contest.

Prior Art ProviderClaim Chart Link
Apex StandardsPseudo Claim Charting
Techson IPLimestone|Report
Amplified Invalidity Report
Traindex Prior Art Report
InQuartik Semantic Prior Art
Ambercite Similar Prior Art
IPscreener Relevant Prior Art
Google Similar Documents - Patents
Google Similar Documents - NPL
Unified Portal Relevant Prior Art

PacSec3 '564 reexamination request granted

On September 7, 2021, four weeks after Unified filed an ex parte reexamination, the USPTO granted Unified’s request, finding substantial new questions of patentability on the challenged claims of U.S. Patent 7,047,564, owned by PacSec3, an NPE. PacSec3 was formed in 2020 with NACAR IP LLC as its managing member. NACAR IP was also formed in early 2020 with Dynamic IP Deals, LLC (d/b/a DynaIP), a patent monetization company, identified as its managing member. The ‘564 patent has been asserted against F5 Networks, NetScout Systems, Palo Alto Networks, McAfee, Cisco, Juniper Networks, and Watchguard Technologies.

View district court litigation by PacSec3. Unified is represented by Jon Bowser, Raghav Bajaj, and Angela Oliver of Haynes and Boone, LLP, and by in-house counsel, Roshan Mansinghani and Jordan Rossen.

To view any documents for the reexamination proceedings on Unified's Portal, go to https://portal.unifiedpatents.com/exparte/90014818.