Director Assessment: Petitioner should Show its Case

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 vital director overview choice 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 state of affairs as extra of a default judgment despite the fact that 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 circumstances, however not within the different 4 circumstances.  In its closing written choice, the PTAB didn’t contemplate 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 adversarial judgment below 37 C.F.R. § 42.73(b).”

In a sua sponte overview of the document, Dir. Vidal famous that Counsel had not expressly deserted the case, and in the course of the listening to acknowledged that judgment for Apple is acceptable “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 contemplate 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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