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Review Delayed Is Not Review Denied

by Christopher M. Bruno | Feb 16, 2023 | America Invents Act, Patents

Considering whether the US Patent & Trademark Office (PTO) Director must complete review of the Patent Trial & Appeal Board’s (Board) inter partes review (IPR) decision within the statutory deadline for a final written decision, the US Court of Appeals for the Federal Circuit concluded that the statute imposes no such requirement. CyWee Group Ltd. v. Google LLC et al., Case Nos. 20-1565, -1567 (Fed. Cir. Feb. 8, 2023) (Prost, Taranto, Chen, JJ.).

In 2018, Google filed two IPR petitions challenging certain claims of CyWee’s patents. The Board issued its final written decisions in January 2020, determining that all challenged claims were unpatentable for obviousness. CyWee appealed to the Federal Circuit in March 2020. In addition to challenging the patentability decision, CyWee challenged the appointment of Board administrative patent judges (APJs) as unconstitutional in view of the Appointments Clause. In March 2021, the Court affirmed the Board’s decisions and rejected CyWee’s constitutional challenge. The Court issued its mandate on June 10, 2020.

Eleven days later, the Supreme Court of the United States issued its decision in United States v. Arthrex, Inc., holding that APJs’ power to render final patentability decisions unreviewable by an accountable principal officer gave rise to an Appointments Clause violation but this violation could be remedied by, among other things, remanding to the acting PTO Director to decide to rehear the case. In response to a request from CyWee, the Federal Circuit recalled the mandate and remanded “for the limited purpose of allowing CyWee the opportunity to request Director rehearing of the final written decisions,” and required CyWee to inform the Court within 14 days of any decision denying rehearing. On remand, the Commissioner for Patents denied rehearing and ordered that the already-issued final written decisions were final decisions of the PTO. CyWee appealed.

CyWee contended that the post-Arthrex, mandated review by the PTO Director was untimely—and thus violative of due process—because the PTO Director did not have the ability to review the institution decision and final written decision within their respective three-month and one-year statutory deadlines. The Federal Circuit disagreed, calling CyWee’s contentions “meritless.” Rather, the Court found that because the PTO Director had permissibly delegated to the Commissioner for Patents authority to render institution and final decisions to the Board, those decisions were timely so long as the PTO Director’s delegees rendered them within the statutorily prescribed periods. By contrast, the PTO Director’s final review authority—a constitutional necessity born from Arthrex—has no similar statutory deadline.

CyWee also argued that the PTO Director’s later review was too late to satisfy a general requirement that the PTO Director consider the effect of regulations on the PTO’s ability to timely complete instituted IPRs. The Federal Circuit rejected this argument too, finding that even if the statute imposed a general timeliness requirement that was subject to judicial review, nothing about the process afforded to CyWee would have violated such a requirement.

With a different spin on the timeliness issue, CyWee also argued that the Board’s extension [...]

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Took a DNA Test, Turns Out “100% THAT BITCH” Is 100% Registrable

by Eleanor B. Atkins | Feb 16, 2023 | Trademarks

Addressing a refusal to register for failure to function as a trademark, the Trademark Trial & Appeal Board (Board) reversed, finding that the evidence of consumer perception of “100% THAT BITCH” did not demonstrate that the proposed mark is such a widespread and common expression that it failed to function as a source identifier. In re Lizzo LLC, Serial Nos. 88466264, 88466281 (TTAB Feb. 2, 2023) (Cataldo, Pologeorgis, Coggins, ATJ).

World-renowned, Grammy-winning artist Lizzo, through her company, Lizzo LLC, filed two applications to register 100% THAT BITCH for use in connection with clothing and related goods in International Class 25. The mark is a reference to a lyric (“I just took a DNA test, turns out I’m 100% that bitch”) from her chart-topping hit, “Truth Hurts.” The US Patent & Trademark Office (PTO) issued an office action refusing to register the mark based on failure to function as a trademark under Sections 1, 2 and 45 of the Trademark Act. Specifically, the examining attorney asserted that the phrase is a “commonplace expression widely used by a variety of sources to convey an ordinary, familiar, well-recognized sentiment.” The PTO denied the request for reconsideration, and Lizzo appealed.

In assessing a refusal to register for failure to function as a trademark, the Board must look to consumer perception of the mark; specifically, whether the mark serves merely an ornamental or informational purpose rather than a source-identifying one. In this case, the relevant consumer consists of the general public, as there were no limitations on the channels of trade or classes of consumers identified in the applications. The examining attorney argued that the evidence demonstrated only that the mark, as used on the relevant goods, portrayed “a message of self-confidence and female empowerment used by many different entities in a variety of settings”—a message that Lizzo “did not originate[,] . . . but merely popularized.”

The Board discounted much of the evidence proffered to show that the mark was ornamental as it largely all referred to Lizzo, her music and/or her song, “Truth Hurts,” demonstrating that “consumers encountering 100% THAT BITCH on the specific types of clothing identified in the application—even when offered by third parties—associate the term with Lizzo and her music.” The Board further noted that all of the evidence regarding third-party use corresponded with the release of Lizzo’s “Truth Hurts”—a correlation that suggests the term was not widely known or used until Lizzo popularized it.

Although there was no disagreement that the proposed mark conveys a “feeling of female strength, empowerment and independence,” the Board found that the record supported that “most consumers would perceive 100% THAT BITCH used on goods in the application as associated with Lizzo rather than as a commonplace expression.” Accordingly, the Board reversed the refusal to register.

Ninth Circuit Extends § 230 Immunity to Domain Name Registrars

by Kavya Rallabhandi | Feb 16, 2023 | Trademarks

The US Court of Appeals for the Ninth Circuit affirmed a district court’s dismissal of the plaintiff’s suit against a domain name registrar, holding that the plaintiff did not adequately allege that the registrar used the disputed trademark “in commerce” as required by the Lanham Act. The Court also extended immunity under the Communications Decency Act to include domain name registrars. Rigsby v. GoDaddy Inc. et al., Case No. 21-16182 (9th Cir. Feb. 3, 2023) (Clifton, McKeown, Thomas, JJ.).

Scott Rigsby, the first double leg amputee to complete an IRONMAN triathlon and founder of the Scott Rigsby Foundation (a nonprofit for wounded veterans and disabled persons), registered the domain name “scottrigsbyfoundation.org” with GoDaddy.com in 2007. GoDaddy is the world’s largest domain name registrar. When Rigsby failed to renew the domain name in 2018 because of a billing glitch, a third party registered the domain name and changed the content to an online gambling site. Rigsby filed suit against GoDaddy in the US District Court for the Northern District of Georgia, seeking declaratory judgment and alleging Lanham Act and state law claims. The suit was transferred to the US District Court for the District of Arizona pursuant to the forum selection clause in GoDaddy’s terms of service. The district court dismissed all claims with prejudice. Rigsby appealed, challenging dismissal and transfer of venue.

The Ninth Circuit affirmed dismissal. As an initial matter, the Court determined that it lacked jurisdiction to review the transfer order because the transferor fell within the Eleventh Circuit.

Turning to the Lanham Act claims under 15 U.S.C. § 1125(a), Rigsby alleged that GoDaddy knowingly provided use of the domain name in a deceptive manner. The Ninth Circuit rejected this argument for two reasons. First, § 1125(a) has a use in commerce requirement, and GoDaddy simply granted the third-party gambling site access to the domain name. The Court held that the third party’s use in commerce does not subject the registrar to liability for trademark infringement or unfair competition. Second, as a domain name registrar that did not engage in activities other than registration, GoDaddy is shielded from liability for cybersquatting under the Anticybersquatting Consumer Protection Act (ACPA). Importantly, the Court held that the plaintiff did not prove that GoDaddy registered, used or trafficked the domain name with a bad-faith intent to profit—a registrar’s lack of intervention with an infringing third-party use is not equivalent to use in commerce or active promotion of infringement.

The Ninth Circuit also barred Rigsby’s state law claims and related injunctive relief, explaining that GoDaddy is entitled to statutory immunity under Section 230 of the Communications Decency Act (CDA). (See § 230(c)(1) (“[n]o provider or user of an interactive computer service shall be treated as the publisher or speaker of any information provided by another information content provider”).) The Court identified three reasons why GoDaddy qualifies for CDA immunity. First, the Ninth Circuit joined the Second Circuit in ruling that domain name registrars and website hosting companies qualify as interactive computer services because [...]

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It’s PRUdent to Refrain from Cybersquatting: ACPA Applies to Domain Name Re-Registration

by Kavya Rallabhandi | Feb 9, 2023 | Technology, Trademarks

The US Court of Appeals for the Fourth Circuit joined the Third and Eleventh Circuits in ruling that the re-registration of an infringing domain name with a bad faith intent to profit violates the Anti-Cybersquatting Consumer Protection Act (ACPA). Prudential Ins. Co. of Am. v. Shenzhen Stone Network Info. Ltd., Case No. 21-1823 (4th Cir. Jan. 24, 2023) (Diaz, Thacker, Floyd, JJ.)

The ACPA, 15 U.S.C. § 1125(d), protects trademark owners from cybersquatters that register, traffic in, or use a domain name “identical or confusingly similar to or dilutive of” a distinctive or famous mark with the “bad faith intent to profit.” The ACPA jurisdictional requirement states that a trademark owner may either establish that a court has in personam jurisdiction over the defendant or, if personal jurisdiction cannot be established, bring an in rem action against the domain name.

Prudential Insurance Company of America’s trademark portfolio includes the term PRU and other PRU-formative marks. Shenzhen Stone Network Information (SSN) acquired the domain name PRU.COM from an online domain name marketplace, which leads to a parked page containing advertisements displaying Prudential’s trademarks and the marks of Prudential’s competitors. Prudential attempted to acquire the PRU.COM domain name twice—once through a domain name brokerage service and once after filing a Uniform Domain Name Dispute Resolution Policy (UDRP) administrative action with the World Intellectual Property Organization (WIPO). SSN rejected both offers. SSN claimed that it planned to develop the website into a foreign exchange and economic news platform, but it never substantively altered the parked page. Prudential subsequently dismissed the UDRP action and filed suit in the Eastern District of Virginia alleging cybersquatting and infringement against the CEO of SSN, Zhang (in personam), and PRU.COM (in rem). Zhang moved to dismiss the action or transfer it to the District of Arizona for lack of personal jurisdiction and in rem jurisdiction. The district court held that although it lacked personal jurisdiction over Zhang, in rem jurisdiction was appropriate at the time the complaint was filed. The district court then dismissed Prudential’s trademark infringement claim as moot, granted summary judgment to Prudential on its cybersquatting claim and ordered SSN to transfer the PRU.COM domain name. SSN timely appealed to the Fourth Circuit.

The Fourth Circuit, reviewing the district court ruling de novo, affirmed. As an initial matter, the Court held that the district court had proper in rem jurisdiction over the PRU.COM domain name because Zhang, as a corporate officer of SSN, lacked standing to defend SSN’s property interests and the domain name registry was located in Virginia. Moreover, in rem jurisdiction is assessed at the time the complaint is filed and cannot be destroyed during the pendency of the case if a proper defendant is later revealed.

Regarding the ACPA claim, SSN argued that since the initial domain name registrant registered PRU.COM in good faith, SSN, as a re-registrant, is not subject to the ACPA. The Fourth Circuit joined the Third and Eleventh Circuits in holding that the term “registration” in the ACPA is [...]

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Actual Confusion Is the Best Evidence of Confusion

by Ashley T. Brzezinski | Feb 9, 2023 | Trademarks

The US Court of Appeals for the Eighth Circuit reversed and vacated a district court’s preliminary injunction grant in a trademark dispute, concluding that potential confusion is insufficient to satisfy the burden of showing a substantial likelihood of confusion. H&R Block, Inc.; HRB Innovations, Inc. v. Block, Inc., Case Nos. 22-2075; -2023 (8th Cir. Jan. 24, 2023) (Gruender, Erickson, JJ.) (Melloy, J., dissenting).

H&R Block was founded in 1955 and specializes in income tax preparation and other tax and financial services. Over the years, H&R Block has invested billions of dollars in advertising campaigns and has developed significant market presence both in person and online. The company has also obtained several federal registrations directed to the use of a green square logo with its products and asserts that in addition to “H&R Block” it is known as just “Block.”

Square, Inc., is the company behind the Square payment card reader and point-of-sale software that allows individual sellers to accept credit card payments. Square was founded in 2009 and grew over time by acquiring or developing other businesses. Cash App is one of Square’s businesses. Cash App started in 2013 as Square Cash and is a purely digital platform that allows users to deposit and store money on the app. In November 2020, Square acquired free tax credit service Credit Karma Tax, which was rebranded as Cash App Taxes and integrated into the Cash App platform for the 2022 tax season. In December 2021, Square was renamed Block, Inc., and the name change was publicized via Twitter.

Fifteen days after the name change was announced, H&R Block filed suit alleging trademark infringement. Shortly thereafter, H&R Block moved for a preliminary injunction. The district court analyzed the marks at issue for likelihood of confusion and granted, in part, H&R Block’s request for a preliminary injunction. Block appealed.

The Eighth Circuit analyzed a list of six non-exclusive and non-exhaustive factors in assessing likelihood of confusion:

The strength of the owner’s mark
The similarity of the owner’s and the alleged infringer’s marks
The degree to which the products compete with each other
The alleged infringer’s intent to pass off its goods as those of the trademark owner
Incidents of actual confusion
The type of product, its cost and its conditions of purchase.

The Eighth Circuit agreed with the district court that H&R Block had demonstrated that its registered and common law marks were commercially strong but found that the record as a whole did not weigh in favor of H&R Block on the similarity factor because there were observable differences between the two logos and the competing products.

The Eighth Circuit indicated that ultimately the best evidence of likelihood of confusion is actual consumer confusion. While the record supported possible confusion by some consumers, the Court found that the district court had erred in finding actual consumer confusion and that H&R Block had not presented sufficient evidence to rise to the level of substantial confusion by an appreciable number of ordinary consumers. [...]

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Deleting Goods from Registration Subject to Cancellation During Audit May Result in Adverse Judgment

by Eleanor B. Atkins | Jan 26, 2023 | Trademarks

The Trademark Trial & Appeal Board (Board) addressed, for the first time, whether the deletion of goods and services as a result of a post-registration audit during a cancellation proceeding triggers Trademark Rule 2.134 and found that it does. The Board required the respondent to show cause as to why its deletion of certain goods from the challenged registration should not result in an adverse judgment. Ruifei (Shenzhen) Smart Technology Co., Ltd. v. Shenzhen Chengyan Science and Technology Co., Ltd., Cancellation No. 92077931 (TTAB Jan. 12, 2023) (Lykos, Lynch, Larkin, ATJ)

Ruifei (Shenzhen) Smart Technology petitioned to cancel a trademark that was registered to Shenzhen Chengyan Science and Technology Co., Ltd. (Chengyan) based on abandonment and fraud. Ruifei thereafter filed a motion for leave to amend its pleadings and concurrently filed a motion for partial summary judgment. Finding that Chengyan did not contest the motion for leave to amend, the Board granted Ruifei’s motion and accepted the proposed amended petition to cancel. The summary judgment motion, however, was deferred, pending Chengyan’s response to the instant order.

After the cancellation proceeding was initiated, Chengyan filed a Section 8 Declaration of Use in connection with the contested registration and received a post-registration office action audit. In response to the audit, Chengyan deleted some of the goods from the contested registration’s identification.

Ruifei mentioned the amendment to the contested registration in its motion for partial summary judgment. The Board, having been made aware of the deletion of goods, held that the amendment raised new issues requiring Chengyan’s input before it could consider the motion for partial summary judgment.

Without the written consent of a petitioner, a respondent’s deletion of goods or services from a registration subject to a pending cancellation action typically would result in judgment against the respondent under Trademark Rule 2.134. The purpose of this rule is to prevent respondents in cancellation proceedings from avoiding judgment by cancelling certain goods or services to render the cancellation action moot.

Trademark Rule 2.134(b) provides respondents with the opportunity to explain why certain goods or services were cancelled under Section 8 to avoid judgment being entered against them:

After the commencement of a cancellation proceeding, if it comes to the attention of the . . . Board that the respondent has permitted its involved registration to be cancelled under section 8 . . . an order may be issued allowing respondent . . . to show cause why such cancellation . . . should not be deemed to be the equivalent of a cancellation by request of respondent without the consent of the adverse party and should not result in entry of judgment against respondent.

The Board had not previously considered a situation in which goods or services were deleted as a result of a post-registration audit but held that the “same concerns . . . and [] policies underlying Trademark Rule 2.134(b) apply.” Accordingly, the Board granted Chengyan 20 days to file a response showing why its deletion of certain goods should not [...]

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Bursting the Bubble on Prosecution Delays

by Christopher M. Bruno | Jan 26, 2023 | Patents

Addressing a case where a patent owner filed hundreds of applications as part of a strategy to maintain extraordinarily lengthy patent coverage, the US Court of Appeals for the Federal Circuit affirmed a district court’s determination that the patent owner had engaged in a calculated and unreasonable scheme to delay patent issuance. Personalized Media Comms., LLC v. Apple Inc., Case No. 21-2275 (Fed. Cir. Jan. 7, 2023) (Reyna, Chen, JJ.) (Stark, J., dissenting).

The Uruguay Round Agreements Act and General Agreement on Tariff and Trade (GATT) amended the US patent term to 20 years from the effective filing date, instead of 17 years from the issue date. GATT took effect on June 8, 1995. In the months leading up to GATT’s enactment, some would-be patentees seeded patent applications with tremendous disclosures to anchor future applications and obtain the longer pre-GATT term. Practitioners referred to this time period as the GATT bubble. Personalized Media Communications (PMC) submitted 328 GATT bubble applications, from which PMC sought somewhere between 6,000 and 20,000 patent claims. The term of these patents would be 17 years from their issue date instead of 20 years from their priority date.

PMC asserted that Apple’s FairPlay digital rights management software infringed a patent covering a decryption method and won a jury verdict of $330 million. After the verdict, the district court held a bench trial and ultimately found that the patent was unenforceable because of prosecution laches, a doctrine that bars the assertion of patents where the patentee caused unreasonable delay in obtaining the patent, to the detriment of the accused infringer. PMC appealed.

The Federal Circuit affirmed. First, it examined whether the district court had properly concluded that PMC unreasonably delayed. Based on a wide swath of record evidence, all three panel members—Judges Reyna, Chen and Stark—agreed that, like the patentee in Hyatt v. Hirschfeld, PMC had engaged in an intentional scheme to delay patent issuance and extend its monopoly. PMC tried to distinguish its case from Hyatt by arguing that it had developed, with the US Patent & Trademark Office, a consolidation procedure to prioritize review of certain applications. The Court concluded that the structure of the agreement still unreasonably drew out resolution of PMC’s applications, however. The Court also approved of the district court’s reasoning based on the number of applications filed and the introduction of new (albeit narrowing) elements to the claims 16 years after the priority date.

Turning to prejudice, the Federal Circuit concluded that the district court did not act improperly in determining that the delay and improper conduct continued to harm Apple up through the filing of suit in 2015. The Court found that the patent had issued based on a pending claim that PMC did not disclose during PMC-Apple license negotiations and which PMC could quickly get granted and assert against Apple.

Judge Stark dissented, stating that he would conclude that the prejudice Apple faced did not happen during the period in which PMC unreasonably delayed issuance. Judge [...]

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I Know That Brand . . . Or Do I? Reviewing the Eleventh Circuit’s Likelihood of Confusion Analysis

by Kavya Rallabhandi | Jan 26, 2023 | Trademarks

The US Court of Appeals for the Eleventh Circuit reversed and remanded a district court’s summary judgment ruling finding no likelihood that consumers might be confused as to any relationship between competitors operating in the same state, in similar trade channels and using a mark having the same primary word component. The Court held that a reasonable factfinder could determine that there was a likelihood of confusion between the parties’ marks as used in commerce. FCOA LLC v. Foremost Title & Escrow Services LLC, Case No. 19-13390 (11th Cir. Jan. 12, 2023) (Branch, Grant, Tjoflat, JJ.)

FCOA is an insurance company that has been selling and marketing insurance policies using FOREMOST marks since 1952. Foremost is a shell company selling title insurance on behalf of a law firm. Both parties operate in Florida. Seven months after Foremost started using its FOREMOST mark, FCOA sent Foremost a cease-and-desist letter. Foremost disputed the trademark infringement allegations and denied having any knowledge of FCOA or FCOA’s FOREMOST marks. The district court denied FCOA’s summary judgment motion and granted Foremost’s cross-motion for summary judgment, holding that FCOA failed to show a likelihood of confusion between the marks. FCOA appealed.

The Eleventh Circuit reviewed the district court decision de novo. Since there was no dispute that FCOA’s marks were valid, the Court focused its trademark infringement analysis on whether Foremost’s FOREMOST mark was likely to cause consumer confusion. It did so by analyzing its eight likelihood of confusion factors:

Actual confusion is the most important factor in the analysis. The Eleventh Circuit found no evidence that consumers actually confused the parties’ marks in the period between Foremost’s allegedly infringing acts and the lawsuit filing. Therefore, this factor weighed against a likelihood of confusion.
A mark’s strength/distinctiveness is the second most important factor because it analyzes the scope of the mark’s protection. The Eleventh Circuit found that FCOA’s FOREMOST mark was distinctive because, although the word mark in isolation is descriptive, it achieved secondary meaning through consumer recognition and commercial strength. The Court did not find Foremost’s list of likely inactive businesses using FOREMOST to be compelling rebuttal evidence. Therefore, this factor weighed in favor of a likelihood of confusion.
Similarity of the marks is relevant because the likelihood of confusion increases as the marks share more overall similarities. The Eleventh Circuit focused on the distinctive parts of the marks, noting that both logos feature FOREMOST prominently in bold, have two lines of text and are similarly centered and stylized. While there are differences in the logo fonts and colors, the Court determined that this factor still weighed in favor of confusion because consumers are unlikely to be discerning about these differences.

Similarity of the products that the marks represent is relevant in determining whether consumers think the marks originate from a single source. The Eleventh Circuit determined that [...]

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Absent Expressed Rationale of Obviousness, Federal Circuit Calls for Do-Over

by Anisa Noorassa | Jan 19, 2023 | Patents

The US Court of Appeals for the Federal Circuit reversed a ruling by the Patent Trial & Appeal Board (Board) where, on appeal, the US Patent & Trademark Office’s (PTO) rationale for sustaining the Board’s obviousness rejection did not reflect “the reasoning or findings the Board actually invoked.” In Re Google, LLC, Case No. 22-1012 (Fed. Cir. Jan. 9, 2023) (Moore, C.J., Lourie, Prost, JJ.)

Google’s patent application covers a method of filtering search results to display age-appropriate results using a “content rating score” in combination with a predetermined threshold value to determine which results will be presented. The application discloses several ways that the threshold value can be calculated, including using the length of the search query as a proxy for the age of the user, with longer queries being associated with older users and leading to a lower threshold score (allowing more mature content to be shown).

The application received a final rejection from the examiner, who asserted that the claims would have been obvious under 35 U.S.C. § 103 based on two prior art references, Parthasarathy and Rose. Parthasarathy disclosed a method to determine a content score to use for ranking results, while Rose disclosed a method to assign result importance based on query length. The examiner argued that it would be obvious to combine Rose and Parthasarathy to achieve the claimed method that recited a “predetermined threshold value” based on the number of words in a query. The examiner acknowledged that Parthasarathy did not disclose a threshold based on a number of words but found that Rose did, citing Rose’s modified relevance-ranking algorithm. He reasoned that it would have been obvious to combine Rose and Parthasarathy to achieve the claimed threshold because “analyzing a query for determining the query length and using the query length as a threshold is very well known in the art and doing so would further provide for assigning weight to a long or a short query for retrieving documents.” Google appealed the examiner’s decision to the Board, which affirmed the examiner’s rejection and adopted the examiner’s findings. Google appealed to the Federal Circuit.

On appeal, the PTO argued that because there were only two ways a person of ordinary skill in the art could modify Parthasarathy’s threshold to incorporate Rose, either of the modifications would have been obvious. However, the Federal Circuit found that this argument was not supported by the Board’s decision. The Court explained that while the Board did conclude that modifying Parthasarathy’s threshold to take into account the length of the query would have been obvious, the Board did not provide any detail as to how that would be achieved. In the absence of specific fact-based findings by the Board, the Court explained that it could not adopt the PTO’s argument, which rested on facts not found in the Board’s decision. A ruling relying on these facts would have resulted in a violation of basic administrative law principles since a court may only uphold an agency action on [...]

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Contingent Statement Doesn’t Unequivocally Abandon Defense of Challenged Claims

by Cecilia Choy, PhD | Jan 12, 2023 | Patents

The Director of the US Patent & Trademark Office (PTO) initiated a sua sponte review of the Patent Trial & Appeal Board’s (Board) adverse judgments in multiple related inter partes review (IPR) proceedings. The PTO Director ultimately ordered that the judgments be vacated and remanded for further consideration. Apple Inc. v. Zipit Wireless, Inc., IPR2021-01124; -01125; -01126; -01129 (Dec. 21, 2022) (Vidal, Dir.)

Apple filed six petitions for IPR, all of which were instituted and assigned to the same panel of Administrative Patent Judges. After institution, Zipit filed responses to two of the IPRs, but not the other four companion IPRs. The Board held a hearing in the two IPRs for which Zipit filed responses. At the end of the hearing, Zipit’s counsel was asked with reference to the four companion IPRs whether Zipit was “not contesting if a final written decision or adverse judgment was entered with respect to those IPRs.” The counsel responded, “correct . . . if the board determines that [Apple has] met their burden of proof with respect to those claims Zipit hasn’t filed any opposition.” Based on this exchange, the Board determined that Zipit abandoned the contests and entered adverse judgments.

The PTO Director initiated review under the interim process for Director review §§ 13, 22, which allows sua sponte Director review, explaining that notice would be given to parties of the proceedings if such a review was initiated. Upon review, the PTO Director did not consider the counsel’s statements to be an “unequivocal abandonment of the contest of these proceedings.” In an IPR, a petitioner has the “burden of proving a proposition of unpatentability by a preponderance of the evidence” and the “burden from the onset to show with particularity why the patent it challenges is unpatentable.” The PTO Director’s interpretation of Zipit’s statements was that “non-opposition was contingent on the Board determining that [Apple] met its burden of proving by a preponderance of the evidence that the challenged claims are unpatentable.”

The PTO Director thus vacated the Board’s adverse judgments and remanded the proceedings to the panel to issue either an order clarifying whether Zipit indeed abandoned the contest or a final written decision addressing the patentability of the challenged claims.

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