Apple v. Zipit Designated Precedential Following Busy December for USPTO

The United States Patent and Trademark Office (USPTO) remained active during the holidays and made several important announcements. Apple v. Zipit WirelessAlso in December, the U.S. Government Accountability Office (GAO) released a full report on the Patent Trial Board (PTAB) that, among other proposals, could affect substantive decisions. It encourages the Patent Office to publish certain policies and instructions to judges. -make.

Apple v. Zipit and Contest Waiver

Today, Secretary Vidal announced on December 21st that spontaneously The Director’s Review decision to reverse the PTAB’s adverse rulings in four inter partes reviews (IPRs) filed by Apple is designated as a precedent. The Director’s Review decision has implications for the contest’s waiver criteria, which Vidal found unfulfilled, based on the patentee’s comments on the proceedings. Zipit responded to two of his six IPRs filed by Apple, but did not respond to the four of his at issue here. At a hearing held on September 21, 2022, the PTAB told Zipit’s attorneys that the patent owners “objected whether there was a final written decision or adverse judgment in respect of their IPRs.” Zipit’s attorneys replied, “Yes. Zipit has not challenged the board if it finds that it has met its burden of proof with respect to those allegations.” It ruled against all three IPRs and determined that the patent owner had abandoned the contest. Vidal, but spontaneously “It cannot be understood that defense counsel’s statements expressly waived these procedural issues,” commenting instead. It was conditional on that,” he said. The disputed claims are not patentable. “

new director review decision in open sky When PQA Cases of Abuse of the Intellectual Property Rights Process

On December 22, Vidal published two precedent judgments in cases related to human rights violations. between the parties The review (IPR) process.

In its first judgment, Vidal ruled that Patent Quality Assurance (PQA) abused the IPR process in its lawsuit against VLSI technology. PQA abused this process by submitting an IPR and threatening VLSI to participate in another IPR in order to receive payments from technology companies.

Vidal also found that PQA misrepresented its “exclusive involvement” with a witness involved in another IPR petition against VLSI from OpenSky, Dr. Adit Singh.

The second ruling concerns a lawsuit between VLSI and OpenSky, in which the UPSTO ruled in October that OpenSky abused the IPR process in its lawsuit against VLSI.

In its latest judgment, Vidal affirmed the PTAB’s decision to remand and found the OpenSky case, now with Intel acting as lead litigator, to be compelling and meritorious. However, Vidal also dismissed OpenSky from the lawsuit “because he does not want OpenSky to benefit from the abuse of the IPR process.”

In addition, Vidal ordered VLSI to “provide reasons why Intel should not be ordered to pay reasonable attorneys’ fees incurred in responding to VLSI’s motion for retrial.”

VLSI attempted to refute the PTAB’s ruling, arguing that the PTAB’s ruling was inconsistent, ignored the facts, and relied on unacceptable hearsay. However, Director Vidal “did not find these arguments persuasive,” and advised:[ed] VLSI and its attorneys support their claims with misleading statements of law and facts. “

The PQA and OpenSky lawsuits are linked because PQA has threatened to file a motion to join OpenSky’s IPR petition. Furthermore, his PQA exclusive engagement with Dr. Singh recreated a declaration from Dr. Singh without Dr. Singh’s knowledge from another of his IPRs submitted against his VLSI by Intel. It contradicted some of his IPR petitions for OpenSky.

The USPTO ruling against PQA is similar to the October ruling against OpenSky, which found that both companies were abusing the IPR process to extract payments from VLSI.

Commissioner Vidal wrote in his decision against PQA:

GAO report calls for greater PTAB transparency

On December 28, the Government Accountability Office (GAO) released its final report on how the PTAB can be more transparent regarding its administration and how the USPTO Director influences judge decisions. published the book.

The report’s preliminary findings, released in July, found that 75% of the judges surveyed said the PTAB’s management and oversight by the USPTO affected their independence. It contains. Additionally, 67% of judges working on America Invents Act (AIA) proceedings said they feel pressure to change or modify aspects of decisions in AIA proceedings based on management review. did.

In response, Vidal said in May that it would implement interim oversight procedures, make management review optional, and not be involved in preissuance decision-making.

“These changes, if finalized and clearly communicated in accordance with the objectives of the USPTO’s strategic plan and federal internal control standards, could help alleviate judges’ concerns,” the GAO said in its report. ” writes.

The final report includes four additional recommendations to UPSTO to increase transparency.

• First, when the UPSTO finalizes its internal review processes, the GAO should clarify the role of PTAB management and the USPTO Director in those processes, the circumstances under which comments are optional or required, and the judge’s ability to follow those comments or comments. We recommended clarifying how decisions are made. It does not affect performance reviews.
• Second, the GAO hopes that PTAB management and UPSTO directors will improve internal communication with judges through a variety of direct communication channels.
• A third recommendation is to publish policies, instructions, or guidance that judges should follow that can have a material impact on the decision-making process.
• And a final recommendation is for the USPTO Director to “develop written guidance outlining when and how stakeholders will provide feedback on POP decisions and communicate this externally.”

In response to the recommendations, the GAO report states: We agree that these are positive first steps and support the USPTO’s efforts to finalize these changes through notice and comment rulemaking so that future USPTO Directors cannot undo them. support “

The GAO report was published ten years after the PTAB was produced by the AIA. The preliminary results were released at his July hearing before the House Judiciary Committee’s Subcommittee on Courts, Intellectual Property, and the Internet. The GAO report was commissioned in June 2021 by his IP subcommittee chair Hank Johnson (Democrat-Georgia) and his ranking member Darrell Issa (Republican-California).

USPTO Defers Non-DOCX Filing Fees Until April

On December 29, the USPTO announced that it would again defer the $400 non-DOCX filing fee to April 3, 2023.

In a statement regarding the deferment, the Patent Office said, “The USPTO has engaged in numerous discussions with interested parties to ensure a fair and reasonable transition to the DOCX format.”

The USPTO has also published a Director’s Blog with tips for patent applicants migrating to the DOCX format.

In a blog post, Vidal wrote that the delay “allows applicants more time to adapt to filing patent applications in DOCX format.”

In August 2020, the USPTO issued a final rule imposing a $400 fee for patent applications not filed in DOCX file format, excluding design, plant, and provisional applications.

Originally, this fee was scheduled to be introduced on January 1, 2022, but in November 2021, the USPTO announced it would defer the fee to January 1, 2023. The aspect that the transition is smooth.

The USPTO says the switch to the DOCX format is part of the organization’s plan to “use state-of-the-art technology to issue and maintain robust and credible patents.”

Director Vidal also said, “DOCX is key to the USPTO’s filing preparation initiative and, in the future, will provide fast, reliable feedback for applicants to modify their applications before they reach the examiner’s desk.” It will be,” he wrote.