Fed Circuit rejects Apple’s Voip-Pal patent appeals
The US Court of Appeals for the Federal Circuit has upheld two Patent Trial and Appeal Board (PTAB) decisions which found that claims of two Voip-Pal.com patents challenged by Apple weren’t invalid for obviousness.
In a precedential decision issued Friday, September 25, the Federal Circuit concluded that the PTAB made no error in its non-obviousness determinations or in its sanction rulings.
The case dates back to February 2016, when technology and communications company Voip-Pal accused Apple of infringing two patents, US numbers 8,542,815 and 9,179,005.
Both patents are called “Producing routing messages for voice over IP communications” and relate to routing communications between two different types of networks—public and private.
In response to being sued, Apple petitioned for inter partes review (IPR) of several claims of the patents in two separate proceedings before the board. The lawsuit was stayed pending the IPRs.
Apple had alleged that the claims were obvious over the combination of US patent numbers 7,486,684 B2 and 8,036,366.
However, in November 2017, the PTAB determined that all claims were not invalid and that Apple didn’t provide evidentiary support for its argument on motivation to combine.
The Federal Circuit noted that the PTAB hadn’t faulted Apple for not citing explicit “teachings, suggestions, or motivations to combine the prior art” and instead only concluded that Apple’s expert provided only “conclusory and insufficient” reasons for combining the two patents.
“Thus, contrary to Apple’s position, the board did not legally err but rather held Apple to the proper evidentiary standard,” said the court.
Apple had also moved for sanctions against Voip-Pal, based on letters sent by Voip-Pal’s former CEO Thomas Sawyer to various parties, criticising the IPR system and requesting judgment in favour of Voip-Pal or dismissal of Apple’s petition.
According to Apple, these communications violated its due process rights and the Administrative Procedures Act.
But the board determined that Voip-Pal had engaged in sanctionable ex parte communications and fashioned its own sanction, which provided that it would preside over Apple’s petition for rehearing. Apple’s petition for rehearing was denied.
“To the extent Apple argues that the board abused its discretion by not ordering a sanction of judgment in Apple’s favour ... we reject this argument,” said Circuit Judge Jimmie Reyna, on behalf of the Federal Circuit.
Reyna added that the PTAB’s decision to allow Apple to petition for rehearing before a new panel, and provide Apple with a meaningful opportunity to respond to Voip-Pal’s letters was a “reasonable course of action and one we will not disturb”.
The court vacated the PTAB’s determinations that a number of the claims were not invalid as obvious and remanding to the board to dismiss the claims as moot. It also affirmed the board’s non-obviousness determinations as to the remaining claims and the board’s sanctions orders.
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