Background
Express Mobile, Inc. holds a portfolio of patents covering browser-based website generation technology — in plain terms, software that lets users build websites without writing code. Two of those patents (U.S. Patent Nos. 7,594,168 and 6,546,397, both titled “Browser based web site generation tool and run time engine”) are at the center of a high-stakes dispute with GoDaddy.com, LLC, the domain registrar and web-hosting giant.
Express Mobile sued GoDaddy for infringement. A Delaware federal jury found GoDaddy liable and awarded $170 million in damages. The trial judge later added $83 million in prejudgment and post-judgment interest, bringing the total exposure to approximately $253 million. The willfulness finding was subsequently overturned (which would have tripled damages), but the underlying verdict stood.
Separately, GoDaddy — along with related petitioners including Google LLC and Meta Platforms Inc. — filed inter partes review (IPR) petitions at the Patent Trial and Appeal Board (PTAB). An IPR is an administrative proceeding at the USPTO where a third party can challenge a patent’s validity on prior art grounds, even after a court case has begun. PTAB’s original panel issued a Final Written Decision canceling claims of the ’168 patent (IPR2021-01226), concluding they were unpatentable — a direct contradiction of the jury’s validity finding.
The Court’s Holding
On June 26, 2026, a PTAB leadership panel — a senior group of judges convened under the Director Review process initiated by USPTO Director John Squires — reversed the original panel’s cancellation of the patent. The leadership panel reinstated the challenged patent claims, holding that “after a jury upheld the patent, there was no reason for the board to reach a different validity outcome.”
Director Squires had ordered Director Review in May 2026, criticizing the original panel for giving “no explanation” for why its ruling differed from the jury’s verdict on the same patent validity questions. His order reflected an emerging USPTO policy that when a jury and PTAB consider substantially the same evidence and arguments on validity, the Board must either align with the jury’s conclusion or provide a detailed, reasoned explanation for departing from it. The leadership panel’s June 26 decision applied that principle and reversed outright.
Key Takeaways
- PTAB is no longer a guaranteed second bite at the apple after a jury verdict: where a jury and the Board consider the same validity evidence, the Board must now either follow the jury’s conclusion or explain specifically why it differs.
- Director Squires’ policy of requiring PTAB to account for parallel jury verdicts creates significant uncertainty for petitioners (like GoDaddy, Google, and Meta) who file IPRs while district court litigation is ongoing or concluded.
- The ruling is a major win for Express Mobile, restoring patent claims that support the $253M total judgment against GoDaddy.
- For companies defending patent suits, this decision weakens the IPR strategy of filing for patent cancellation as leverage or insurance after an adverse jury verdict on the same validity issues.
- The two related patents (7,594,168 and 6,546,397) each had companion IPR proceedings; the fate of the ’6,546,397 companion IPRs may now also be affected by this leadership panel precedent.
Why It Matters
IPR proceedings were designed by Congress as a streamlined way to weed out invalid patents — but they have increasingly been used by well-funded defendants to escape liability even after losing at trial. This leadership panel ruling signals a significant shift: PTAB under Director Squires is moving toward greater deference to jury verdicts, at least where the factual record substantially overlaps. That’s a major policy change that will affect dozens of pending IPRs where defendants have lost at the district court level but are still pursuing PTAB cancellation.
For the tech industry specifically — where companies like Google and Meta routinely join or file IPRs against patents asserted against any member of their ecosystems — this ruling raises the stakes of parallel PTAB challenges. Defendants who lose at trial may find PTAB unwilling to serve as a backstop if the same validity arguments were already rejected by a jury. Conversely, patent holders who prevail at trial now have stronger grounds to oppose PTAB cancellation proceedings on the basis of the jury verdict.