On January 4, 2023, Director Vidal picked up right where she left off in 2022 with her use of sua sponte Director review decisions. This time addressing what constitutes a request for adverse judgment during an IPR.
In Apple Inc. v. Zipit Wireless, Inc. (decision available here), Apple filed six petitions for IPR, but the patent owner only filed responses in two of the cases. During a hearing before the Board, Zipit’s counsel was questioned with respect to the other four cases about whether Zipit is “not contesting if a final written decision or adverse judgment was entered with respect to those IPRs.” Zipit’s counsel responded, “[c]orrect, 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.” Adverse judgment was subsequently entered.
In her Director review decision, Director Vidal explained that Zipit’s position was not an unequivocal abandonment of the contest:
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.” … 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.
Given that it is ultimately the petitioner’s burden to prove unpatentability, this decision make sense, particularly in view of counsel’s express statement.