Apple v. Zippit News Strategies for Patent Inter Partes Review?

Apple Inc. vs. Zipit Wireless, Inc.(IPR2021-01124, -01125, -01126, -01129)

Director Kathy Vidal makes new case ruling spontaneously What Affects Contest Waiver Criteria between the parties Review (IPR). The decision came after the Patent Trial Board (Board) handed down four judgments against him against patent owner Her Zipit Wireless, Inc. (Zipit). In June 2021, Apple Inc. filed six petitions for her IPR, all six of which were assigned to the same panel at APJ. The Commission initiated his IPRs on all six of his IPRs, and in response Zipit said he filed patent owner responses to two of his IPRs, but did not respond to his remaining four IPRs. I chose not to submit.

The Board then held a hearing on September 21, 2022 to determine whether Zipit “has not contested whether a final written decision or adverse judgment has been entered in respect of those IPRs.” was asked (patent owner’s answer). Zipit responded that four he had not contested the IPR and “will not contest the final written judgment or dissenting opinion if the board determines that: [Apple, as the petitioner] fulfilled their burden of proof. The Commission deemed Zipit’s statement to be a waiver of the contested proceedings and subsequently rendered four judgments against him under 37 CFR §42.73(b)(4).

However, the commission’s reasoning for the unfavorable ruling produced Vidal’s judgment. spontaneously advance decision. The Director said Zipit’s objection was not a waiver of the contest and hoped that the Board would consider petitioner’s evidence and make the necessary determination based on the procedural standards used in IPRs. said that it should be better interpreted as stated. Because the Commission misinterpreted Zipit’s statement as a complete abandonment, Secretary Vidal reversed the Commission’s adverse decision and referred it back to the panel to determine whether Zipit had abandoned the contest, and if not, issued a final written decision on the merits addressing patentability. challenged claims.

While the Director’s decision is a reminder that patent owners need to choose their words carefully when IPRing, the decision reduces the procedural burden of initiating an IPR and the need to make a final decision. It also highlights potential gaps in the burden used for IPR. Specifically, under 35 USC § 314, an IPR cannot be commenced unless the petitioner demonstrates that: reasonable possibility that they win at least one claim. However, once initiated, the IPR will be conducted pursuant to 35 USC § 316. Predominance of evidenceVidal’s decision appears to be at least a small victory for patent owners. This is because it seems to make it clear that the patent owner has the option not to formally participate in her IPR (e.g. to conserve resources). Finding of Unpatentability Based on Petition and Accompanying Evidence.

At the same time, does this decision, at least in the circumstances chosen by the patent owner, lead to a situation where the different criteria applied to the Authority and the final written decision lead to a situation where the former burden is met but the latter is not? We leave open the question of how. Do not submit a formal patent owner response. The Board appears to be able to institute claims A and B on the strength of the petition against claim A only, but ultimately the patent owner does not challenge the action through the filing of an action. Claim B may still be upheld in a final written decision. formal answer. Future decisions from the Board in these and other similar cases should help clarify further the practical differences between the Office’s standard and the standard for final determination of unpatentability.

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