Lawyers for Apple have demanded that the Patent Trial and Appeal Board (PTAB) take action against a patent owner whose IP the iPhone maker had challenged in IPR, accusing it of tarnishing the review’s “fundamental fairness with ex parte communications”. The motion, which was filed shortly before Christmas, represents a further escalation in what has already proved to be one of the most remarkable IPR proceedings in the more than five years since the reviews began.
The patent owner in question, a company called Voip-Pal.com, lobbied successfully last year to change a panel of administrative law judges (ALJ) hearing one of the IPRs brought against it by Apple, following allegations of possible bias concerning one of the ALJs. An adviser to Voip-Pal.com wrote on six separate occasions to PTAB Chief Judge David Ruschke and various other senior IP and political figures - including acting USPTO director Joe Matal, Commerce Secretary Wilbur Ross and even President Trump – demanding, in his initial letter, action be taken to remove an ALJ who had previously represented Apple in litigation while in private practice.
In the letters, the adviser also complained of serious concerns regarding the PTAB and IPR process which he claimed “have deviated far from the initial purposes of the America Invents Act”. In his final correspondence last October he went as far to refer to the possibility of “civil litigation against the USPTO and the individual administrators and judges who have allegedly engaged in behaviour that may support a civil Racketeering Influence Corrupt Organisations Act (RICO) action”.
The original panel of ALJs was replaced after Apple’s review had been instituted but, bucking the typical outcome post-institution, Voip-Pal.com won on the final written decision leaving its patent intact. That would be cause for celebration for any patent owner up against Apple, the most experienced IPR petitioner and one with exceedingly deep pockets. Except that Apple’s latest motion suggests that that may not be the end of it.
In their filing the iPhone maker’s lawyers claim that: “Whether or not Voip-Pal’s ex parte communications influenced the ultimate decision, they were certainly designed to do so. Such actions cannot go unredressed. The Board should enter judgment against Voip-Pal on all claims subject to IPR challenge by Apple.” Failing that, the lawyers called on the decision to be vacated and the review reheard before a new panel of ALJs.
While Voip-Pal posted each of its letters on its website (you can see all six here), none were sent to Apple or entered into the record in the IPR according to the tech giant’s lawyers (they have since been added to the record according to a review of Lex Machina). They were written by Dr Thomas Sawyer, a former chairman and CEO of the company, who, Apple’s motion alleges, was acting in concert with Voip-Pal.com and its lawyers.
The company, which bills itself as a “global leader in cost-efficient technology that enables high-volume text, voice and digital multi-media communications”, has accused Apple of infringing its IP in a district court action and has demanded $2.8 billion in damages. It has been on a remarkable run at the PTAB as it has looked to defend its rights, fighting off eight reviews brought not only by Apple, but also the likes of Unified Patents and AT&T. According to Lex Machina, of the eight IPRs that have been filed against Voip-Pal’s patents, six were denied institution while two (including the one in question here) had all of their claims upheld following institution.
That’s a record which suggests that the company has some very good quality grants; but the latest motion from the Cupertino-based tech giant shows the degree to which it, arguably more than any other defendant, is prepared to fight its corner in infringement disputes.
Allegations of bias at the PTAB surfaced last year as many patent owners continued to rail against what they see as procedures that are fundamentally unfair to them. Over at IPWatchdog.com, Gene Quinn has been keeping close tabs on the allegations, including the one involving Voip-Pal.com, and has posted a series of articles detailing what he has framed as a deeply worrying trend.
It seems clear that patent owners and other stakeholders are becoming increasingly aggressive in their criticism of what they allege are improper or questionable actions taken by the board. The latest example of this is the recent filing from the lawyers for the Saint Regis Mohawk tribe calling for a hearing and further discovery “into the identity and impartiality of the merits panel assigned to this case”.
The tribe has been in the headlines recently having taken ownership of several drug and technology patents in an effort to shield those grants from IPR by using sovereign immunity. Its motion, which was filed with the PTAB at the start of the year, elicited a stern rebuke from the board and an order preventing it from making additional, similar filings. The use of sovereign immunity may prove to be short lived following a decision, prior to the Christmas break, from the PTAB in a case involving the University of Minnesota which ruled that the university had effectively waived its immunity by asserting its IP in court.
But the debate around immunity and allegations of impropriety against petitioners, patents owners and the Board itself, could be seen as adding fuel to the fire over the PTAB, which remains perhaps the most controversial part of the US patent system. As the latest motion from Apple shows, it is a mess that will no doubt be at the top of the to-do list for incoming USPTO Director Andrei Iancu once he is confirmed by a full Senate vote.