September 25, 2023


Move Step By Step

Director Evaluation: Petitioner should Show its Case

2 min read

by Dennis Crouch

Apple Inc. v. Zipit Wi-fi, Inc., 2022 WL 18108215 (PTO Dir., Dec. 21, 2022)

Again in December, Director Vidal issued an necessary director overview resolution holding an IPR challenger should show that the challenged claims are invalid, even when the patentee raises no protection.  The PTAB seems to have incorrectly handled the scenario as extra of a default judgment though the patentee had not expressly deserted.

Apple filed three IPR petitions in opposition to every of two Zipit patents.  The PTAB instituted IPR proceedings in all six.  At that time, Zipit filed patent proprietor responses in two of the instances, however not within the different 4 instances.  In its ultimate written resolution, the PTAB didn’t think about the deserves of the case, however merely concluded that the patent proprietor had “deserted the competition” and handled their lack of opposition as a “request for hostile judgment below 37 C.F.R. § 42.73(b).”

In a sua sponte overview of the file, Dir. Vidal famous that Counsel had not expressly deserted the case, and through the listening to said that judgment for Apple is suitable “if the Board determines that they’ve met their burden of proof with respect to these claims.”  Vidal concluded that “Patent Proprietor’s non-opposition was contingent on the Board figuring out that Petitioner met its burden of proving by a preponderance of the proof that the challenged claims are unpatentable.” As such, the Board should think about the proof introduced by Apple and decide whether or not it meets the statutory burden of offering “unpatentability by a preponderance of the proof.” 35 U.S.C. 316(e).

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