The United States Patent and Trademark Office (USPTO) maintains a list of all PTAB precedential and informative decisions organized by subject matter.[1] These precedential decisions establish “binding authority concerning major policy or procedural issues, or other issues of exceptional importance, including constitutional questions, important issues regarding statutes, rules, and regulations, important issues regarding case law, or issues of broad applicability to the Board.”[2] In December of 2022, the USPTO designated two recent decisions as precedential, Apple Inc. v. Zipit Wireless[3] and Patent Quality Assurance, LLC v. VLSI Technology LLC.[4]
Apple Inc. v. Zipit Wireless, IPR2021-01124
In June of 2021, Apple Inc. filed six petitions for inter partes review (IPR), all of which were instituted by the Board. However, Zipit Wireless filed a Patent Owner Response in only two of the six proceedings. During one of those two proceedings, an administrative judge asked “whether Patent Owner is ‘not contesting if a final written decision or adverse judgment was entered with respect to those IPRs.’”[5] In return, Zipit Wireless’ counsel responded, “Correct, Your Honor. If the Board determines that they have met their burden of proof with respect to those claims Zipit hasn’t filed any opposition.”[6]
The Board interpreted this statement as an abandonment of the four remaining IPR proceedings. The Director of the USPTO, however, happened to disagree, remanding the proceedings back to the panel of administrative judges. The Director held the statement was contingent on the Board finding that the challenged claims were unpatentable by the preponderance of the evidence.
Take Away – A practitioner should carefully consider negative statements. Cautious phrasing of an oral statement may prevent the Board from interpreting it as an abandonment.
Patent Quality Assurance, LLC v. VLSI Technology LLC, IPR2021-01229
Patent Quality Assurance, LLC v. VLSI Technology LLC stems from a Jury verdict awarding VLSI $1.5 billion in damages from Intel for patent infringement.[7] Patent Quality Assurance (PQA) filed a Petition for IPR challenging the relevant claims on the VLSI jury verdict copying “extensively” from an earlier Intel petition.[8] The PQA petition was similar to a previous petition filed by OpenSky[9] but PQA retained the same expert as the original Intel petition.
The Director of the USPTO ordered a sua sponte Director review of the Board’s institution of this proceeding relating to abuse of process.[10] Here, the Director found PQA failed to comply with mandatory discovery of the Director review and applied sanctions.[11] The Director additionally found PQA’s “conduct has been an abuse of the IPR process, the patent system, and the Office.”[12] Ultimately, PQA was dismissed from the proceeding leaving Intel as the lead petitioner.[13]
Take Away – The appearance of impropriety will attract the attention of the Director of the USPTO. PQA’s attempt to “game” the IPR proceedings simply went a step too far. Future petitioners should use caution when filing an IPR petition after a large third party jury verdict.
[1]Precedential and Informative Decisions, USPTO, https://www.uspto.gov/patents/ptab/precedential-informative-decisions (last visited Jan. 21, 2023).
[2] Id.
[3] Apple Inc. v. Zipit Wireless, Inc., IPR2021-01124 et al., Paper 14 (December 21, 2022) (designated: January 4, 2023).
[4] Patent Quality Assurance, LLC v. VLSI Technology LLC, IPR2021-01229, Paper 102 (December 22, 2022).
[5] Apple Inc. v. Zipit Wireless, Inc., IPR2021-01124 et al., Paper 14 (December 21, 2022) (designated: January 4, 2023) at 3.
[6] Id.
[7] Patent Quality Assurance, LLC v. VLSI Technology LLC, IPR2021-01229, Paper 102 (December 22, 2022) at 8.
[8] Id. at 10.
[9] See C. Mathis Brazeal, PTAB Sanctions Non-Practicing Entity for Seeking to Abuse the IPR Process in Order to Extort Money, Rothwell Figg’s PTAB LAW BLOG (Nov. 9th, 2022), https://www.ptablaw.com/2022/11/09/ptab-sanctions-non-practicing-entity-for-seeking-to-abuse-the-ipr-process-in-order-to-extort-money/.
[10] Patent Quality Assurance, LLC v. VLSI Technology LLC, IPR2021-01229, Paper 102 (December 22, 2022) at 15.
[11] Id. at 25-27
[12] Id. at 54.
[13] Id. at 66.
