Apple Inc. v. Zipit Wireless, Inc.

Director_PTABDecision_Review@uspto.gov 	Paper 14
571-272-7822 	Date: December 21, 2022
BEFORE THE OFFICE OF THE UNDER SECRETARY OF COMMERCE
FOR INTELLECTUAL PROPERTY AND DIRECTOR OF THE
UNITED STATES PATENT AND TRADEMARK OFFICE
APPLE INC.,
Petitioner,
v.
ZIPIT WIRELESS, INC.,
Patent Owner.
IPR2021-01124 (Patent 7,292,870 B2)
IPR2021-01125 (Patent 7,292,870 B2)
IPR2021-01126 (Patent 7,292,870 B2)
IPR2021-01129 (Patent 7,894,837 C1)1
Before KATHERINE K. VIDAL, Under Secretary of Commerce for
Intellectual Property and Director of the United States Patent and
Trademark Office.
DECISION
Ordering Rehearing, Vacating Adverse Judgment, and Remanding to the
Patent Trial and Appeal Board Panel for Further Proceedings
1 This Order applies to each of the above-listed proceedings.

IPR2021-01124 (Patent 7,292,870 B2)
IPR2021-01125 (Patent 7,292,870 B2)
IPR2021-01126 (Patent 7,292,870 B2)
IPR2021-01129 (Patent 7,894,837 C1)
2
I. 	INTRODUCTION
On December 13, 2022, the Patent Trial and Appeal Board (“PTAB”
or “Board”) issued a Judgment Granting Request for Adverse Judgment
After Institution of Trial in each of the above-captioned cases. IPR2021-
01124, Paper 13 at 3; IPR2021-01125, Paper 14 at 3; IPR2021-01126,
Paper 13 at 3; IPR2021-01129, Paper 14 at 3 (“Adverse Judgments”).
I have considered the Board’s Adverse Judgments, and I initiate a sua
sponte Director review and remand these proceedings to the Board for
further determinations consistent with this Decision. 	See Interim process for
Director review §§ 13, 22 (providing for sua sponte Director review and
explaining that “the parties to the proceeding will be given notice” if
Director review is initiated sua sponte).2
II. 	DISCUSSION
In June 2021, Apple Inc. (“Petitioner”) filed six petitions for inter
partes review before the Board. IPR2021-01124, Paper 3; IPR2021-01125,
Paper 3; IPR2021-01126, Paper 3; IPR2021-01129, Paper 3; IPR2021-
01130, Paper 3; IPR2021-01131, Paper 3. All six cases were assigned to the
same panel of Administrative Patent Judges, and the Board instituted inter
partes review in all six cases. IPR2021-01124, Paper 7; IPR2021-01125,
Paper 8; IPR2021-01126, Paper 7; IPR2021-01129, Paper 7; IPR2021-
01130, Paper 7; IPR2021-01131, Paper 7. After institution, Zipit Wireless,
Inc. (“Patent Owner”) filed Patent Owner Responses in IPR2021-01130 and
IPR2021-01131, but did not file a Patent Owner Response in IPR2021-
2 Available at https://www.uspto.gov/patents/patent-trial-and-
appealboard/interim-process-director-review.

IPR2021-01124 (Patent 7,292,870 B2)
IPR2021-01125 (Patent 7,292,870 B2)
IPR2021-01126 (Patent 7,292,870 B2)
IPR2021-01129 (Patent 7,894,837 C1)
3
01124, IPR2021-01125, IPR2021-01126, or IPR2021-01129 (the four
proceedings at issue here).
The Board held a hearing on September 21, 2022, in IPR2021-01130
and IPR2021-01131, and a transcript of the hearing was entered into the
record of those two cases. IPR2021-01130, Paper 29; IPR2021-01131,
Paper 29 (“Tr”). At the end of that hearing, Patent Owner’s counsel was
questioned, with reference to “the companion cases . . . IPR2021-01124,
1125, 1126 and 1129,” whether Patent Owner is “not contesting if a final
written decision or adverse judgment was entered with respect to those
IPRs.” Tr. 63:23–64:17. Patent Owner’s 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.” Id. at 64:18–
20. In light of Patent Owner’s statements, the Board entered adverse
judgments, under 37 C.F.R. § 42.73(b)(4), determining that Patent Owner
had abandoned the contests. IPR2021-01124, Paper 13; IPR2021-01125,
Paper 14; IPR2021-01126, Paper 13; IPR2021-01129, Paper 14.
On the present record, however, I do not understand counsel’s
statements to have been an unequivocal abandonment of the contest of these
proceedings. Instead Patent Owner’s non-opposition was contingent on the
Board determining that Petitioner met its burden of proving by a
preponderance of the evidence that the challenged claims are unpatentable.
“In an inter partes review . . . , the petitioner shall have the burden of
proving a proposition of unpatentability by a preponderance of the evidence”
and “the petitioner has the burden from the onset to show with particularity
why the patent it challenges is unpatentable.” 35 U.S.C. § 316(e); Harmonic

IPR2021-01124 (Patent 7,292,870 B2)
IPR2021-01125 (Patent 7,292,870 B2)
IPR2021-01126 (Patent 7,292,870 B2)
IPR2021-01129 (Patent 7,894,837 C1)
4
Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35
U.S.C. § 312(a)(3) (2012) (requiring inter partes review petitions to identify
“with particularity . . . the evidence that supports the grounds for the
challenge to each claim”)). Accordingly, I vacate the Board’s adverse
judgments and remand these proceedings back to the panel to either issue a
show cause order clarifying whether Patent Owner is indeed abandoning the
contest or to issue a final written decision addressing the patentability of the
challenged claims.
No additional briefing from the parties is authorized. See Interim
process for Director review § 13 (explaining that the Director may give the
parties an opportunity for briefing if Director review is initiated sua sponte).
III. ORDER
Accordingly, based on the foregoing, it is:
ORDERED that sua sponte Director review of the Board’s Judgments
Granting Request for Adverse Judgment After Institution of Trial (IPR2021-
01124, Paper 13; IPR2021-01125, Paper 14; IPR2021-01126, Paper 13;
IPR2021-01129, Paper 14) is initiated;
FURTHER ORDERED that the Judgments Granting Request for
Adverse Judgment After Institution of Trial are vacated; and
FURTHER ORDERED that the cases are remanded to the panel for
further proceedings consistent with this Decision.

IPR2021-01124 (Patent 7,292,870 B2)
IPR2021-01125 (Patent 7,292,870 B2)
IPR2021-01126 (Patent 7,292,870 B2)
IPR2021-01129 (Patent 7,894,837 C1)
5
FOR PETITIONER:
W. Karl Renner
David Holt
Karan Jhurani
FISH & RICHARDSON P.C.
axf-ptab@fr.com
holt2@fr.com
jhurani@fr.com
FOR PATENT OWNER:
Stephen R. Risley
Cortney S. Alexander
KENT & RISLEY LLC
steverisley@kentrisley.com
cortneyalexander@kentrisley.com