Q&A: What does Vidal's review of Apple case mean for patent owners at the PTAB?
Kathi Vidal’s precedential review of a PTAB decision holds lessons for patent owners | Onus is on petitioner to provide evidence that claims are unpatentable, says senior patent attorney.
In the latest high-profile review of a Patent and Trial Appeal Board (PTAB) decision, USPTO director Kathi Vidal reversed patent infringement wins in favour of Apple.
Vidal’s precedential order in Apple v Zipit Wireless vacated the PTAB’s earlier decision that patent owner Zipit Wireless had intended to “abandon the contest” following inter partes reviews of six of its patents.
This was based on Zipit Wireless’ decision not to file responses relating to four of the cases. Zipit told the PTAB: “If the board determines that they have met their burden of proof with respect to those claims Zipit hasn’t filed any opposition.”
The PTAB later ruled that “in light of patent owner’s statements, the Board entered adverse judgments…determining that Patent Owner had abandoned the contests.”
However, Vidal disagreed, stating that Zipit’s non-opposition was contingent on the board determining that Apple had met its burden of proving that the challenged claims are unpatentable.
“On the present record, however, I do not understand counsel’s statements to have been an unequivocal abandonment of the contest of these proceedings,” Vidal ruled.
“Instead patent owner’s non-opposition was contingent on the board determining that petitioner met its burden of proving by a preponderance of the evidence that the challenged claims are unpatentable.”
Vidal vacated the board’s adverse judgments and remanded the proceedings back to the PTAB to issue a show cause order clarifying whether Zipit is abandoning the contest or to issue a final written decision addressing the patentability of the challenged claims.
WIPR asked Rob McFarlane, chair of Hanson Bridgett’s technology practice and co-chair of its IP Practice, what he made of Vidal’s decision; whether it is in line with the director’s previous reviews, and what patent owners can learn from it.
Do you agree in this case with Vidal's decision?
I agree with the director’s decision. First, the decision appropriately recognises that the institution of an IPR is governed by a lower burden than the ultimate question of whether the challenged claims were, in fact, unpatentable. Second, I agree with the decision’s conclusion that the patent owner’s counsel did not unequivocally abandon the contest of the IPR proceedings.
