Voip-Pal.com Inc. is pleased to report the Patent Trial and Appeal Board (“PTAB”) has decided Apple’s Motion for Sanctions in its IPR proceedings against Voip-Pal’s U.S. Patent Nos. 8,542,815 and 9,179,005 (“the ‘815 and ‘005 patents”).
In the decision dated December 21, 2018, a new panel (the Board) of the PTAB denied Apple’s request for judgment invalidating the ‘815 and ‘005 patents, denied Apple’s request for entirely new IPR proceedings and granted Apple’s request for a new panel as a sanction against Voip-Pal for what the PTAB deemed were improper ex parte communications. Accordingly, the validity of the ‘815 and ‘005 patents is upheld and the PTAB’s final written decisions regarding the ‘815 and ‘005 patents stand.
In its decision, the Board determined that the letters that were the subject of Apple’s Motion for Sanctions constituted improper ex parte communications and imposed the following sanction on Voip-Pal – appointing an entirely new panel to consider any request for rehearing from Apple if such a request is made. Under 37 CFR 42.71(d), a request for rehearing is an existing right of any party seeking to challenge a decision of the Board, such as the final written decisions here, and the Board determined that the proper sanction here was not to have an entirely new proceeding or to invalidate the patents, but instead to have an entirely new panel consider any request for rehearing.
PTAB rule 37 CFR 42.71(d) governs rehearing requests after final decisions and provides, in relevant part, that any request for rehearing must specifically state the points believed to have been misapprehended or overlooked in the Board’s decision. If such a request is made by Apple, the burden would be on Apple to make the requisite showing that the final written decisions were incorrectly decided on the merits. Voip-Pal also has the right to file a response to Apple’s request for rehearing if Apple makes such a request.
Emil Malak, CEO of Voip-Pal, stated: “We are very pleased with this ruling. The PTAB’s decision affirmed that Dr. Sawyer’s letters did not ‘prejudice’ the outcome of the IPR proceedings and Voip-Pal once again prevailed on the technical merits of the patents. The most important result was the PTAB’s denial of Apple’s requests to cancel the patents or vacate the final written decisions. The new senior panel of three judges which denied Apple’s requests must have carefully examined the technical merits of the final written decisions rendered by the previous panel which ruled in favor of Voip-Pal.”