• Sep 25 2020
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  • Category: CAFC Updates, Inc. owns U.S. Patent Nos. 8,542,815 and 9,179,005, both of which are titled “Producing Routing Messages for Voice Over IP Communications” and sued Apple Inc. for infringement. Apple petitioned for inter partes review (“IPR”) of several claims of the Voip-Pal patents. During the IPR proceedings, Voip-Pal’s former CEO sent six letters to various parties (members of Congress, the President, federal judges, and administrative patent judges at the Board), but did not copy or send Apple the letters. The letters criticized the IPR system, complained about cancellation rates at the Board, and requested judgment in favor of Voip-Pal or dismissal of Apple’s petition in the ongoing Apple IPR proceedings. The letters did not discuss the underlying merits of Apple’s IPR petitions. In final written decisions, the Board upheld the validity of all claims in view of the art presented by Apple. Apple then moved for sanctions against Voip-Pal based on the ex parte communications with the Board and the Patent Office. After moving for sanctions, Apple appealed the Board’s final written decisions. The Board determined that Voip-Pal engaged in sanctionable ex parte communications, and fashioned a sanction granting Apple a re-hearing on the merits. The Board denied Apple’s petition for rehearing because Apple had not met its burden to show that the Board misapprehended or overlooked any matter. After addressing a threshold jurisdictional issue raised by Apple regarding a finding by the CAFC that in related litigation that certain Voip-Pal claims were patent ineligible under 35 U.S.C. § 101, with respect to sanctions, the CAFC holds that the plain reading of 37 C.F.R. § 42.12(b) provides the Board with discretion to issue sanctions and that the Board did not commit an APA violation when it issued a sanction not explicitly listed in Section 42.12. With respect to validity, the CAFC finds that the Board held Apple to the proper evidentiary standard when it noted that Apple’s expert provided only conclusory and insufficient reasons for combining the prior art and failed to articulate reasoning with some rational underpinning. Accordingly, the CAFC vacates the Board’s determinations that the patent ineligible claims are not invalid as obvious (remanding to the Board to dismiss these claims as moot), affirms the Board’s non-obviousness determinations as to the remaining claims, and affirms the Board’s sanctions orders.

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