PTAB Newsletter

• Jurisdiction: United States,Federal
• Law Firm: Arnold & Porter
• Subject Matter: Intellectual Property, Patent
• Author: Ms Jessica C. Kaiser, Abigail Struthers, Christopher Marando, Elizabeth Long, Alice Ho, Atanas Baitchev, Thomas Carr PhD, Drew Needham and John Sabacinski
• Published date: 01 February 2023

In This Issue:

• Q&A with Arnold & Porter PTAB Practitioner Betsy Long
• Recent Director Review Decisions
  • Director Vidal Designates Precedential Sua Sponte Decision Vacating Adverse Judgments Entered Under 37 C.F.R. ' 42.73(b)(4): Apple, Inc. v. Zipit Wireless, Inc., IPR 2021-01124, 1125, 1126, 1129, Paper 14 (Dec. 21, 2022)
  • Director Vidal Issues Decisions on Director Review in Two Cases Involving Abuse of the IPR Process: OpenSky Industries LLC v VLSI Technology LLC, IPR2021- 01064, Paper 121 (Dec. 22, 2022) and Patent Quality Assurance, LLC, v. VLSI Technology LLC IPR2021-01229, Paper 102 (Dec. 22, 2022) (precedential)
• Recent PTAB Case Regarding Priority Issues in the Context of Section 325(d) and Alleged Stealth 112 Challenges: Motorola Mobility LLC v. Largan Precision Co., Ltd., IPR2022-01156 Paper 13 (Jan. 4, 2023)
• PTAB Decision Denying Institution of Post-Grant Review Which Included Section 101, 112, and 325(d) Issues: Risen (Suzhou) Pharma Tech. Co. Ltd. v. Alzheon, Inc., PGR2022-00051, Paper 14 (Jan. 13, 2023)
• Recent PTAB Decision Applying and Distinguishing the Director's OpenSky Decision: Cisco Systems, Inc v. Centripetal Networks, Inc., IPR2022-01151, Paper 12 (Jan. 4, 2023)
• Upcoming Events and Speaking Engagements
• Other Notable Developments

How would you describe your practice?

When I first started practicing law, I worked on a wide range of technologies in district court proceedings. I then spent a decade working for the government doing appellate work. Since coming back to private practice, I have focused mainly on technology patents in district court proceedings, PTAB proceedings, and Federal Circuit appeals.

How long have you been practicing in front of the USPTO and in front of the PTAB?

I wisely took the patent bar exam while in law school (when it was still the BPAI). I had just started working as a technical assistant at the Federal Circuit when the AIA went into effect, so I worked on the PTAB appeals from the beginning. The appeals were really interesting because the issues were all a matter of first impression since the PTAB was brand new and it was all unchartered waters. Since returning to private practice, along with working on district court cases, I have been working on inter partes reviews at the PTAB.

Why were you interested in practicing before the PTAB, and how did you get involved in the practice?

In my role at the Federal Circuit, I supported neutral decision makers whose job was to reach the correct outcome based on the record. After working on PTAB appeals while at the Federal Circuit, I was eager to work on PTAB matters as a private practitioner where you get to be the advocate. It is a different mindset, but my time at the Federal Circuit has helped me bring a different perspective to the advocacy role.

How would you like to grow your practice before the PTAB?

I would like to continue to hone my IPR skills. Every IPR is a new challenge, and you always learn something new that you can use going forward.

What do you enjoy about practicing at Arnold & Porter?

The people at Arnold & Porter are amazing. It goes without saying that the legal work is topnotch but, in addition, they really care about their work, their clients, and their colleagues. In the short time I have been here, I have met so many great people and already feel like I am part of the team.

What do you like to do in your spare time?

Attempting to see, do, and eat everything in New York. I get all of the emails about the latest shows and new restaurants. Recent shows I've enjoyed include Emma Rice's Wuthering Heights and the wild ride that is Titanique. As for restaurants, the list is endless, but Bonnie's and Dhamaka both lived up to the hype.

Recent Director Review Decision

Director Vidal Designates Precedential Sua Sponte Decision Vacating Adverse Judgments Entered Under 37 C.F.R. ' 42.73(b)(4): Apple, Inc. v. Zipit Wireless, Inc., IPR 2021-01124, 1125, 1126, 1129, Paper 14 (Dec. 21, 2022)

On January 4, 2023, Director Vidal designated precedential a sua sponte decision in Apple Inc. v. Zipit Wireless, Inc., IPR2021-01124, Paper 14 (December 21, 2022), addressing adverse judgments the Board had entered in four related IPRs under 37 C.F.R. ' 42.73(b)(4). In the four related IPRs, Patent Owner declined to file Patent Owner Responses. Subsequently, during a hearing regarding companion IPRs, the Board questioned Patent Owner regarding its position in the four related IPRs. The Director summarized Patent Owner's statements during the hearing as follows:

Patent Owner's counsel was questioned, with reference to 'the [four related IPRs],' whether Patent Owner [was] '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[, Patent Owner] hasn't filed any opposition.' Id. at 64:18-20.

Order at 3 (emphasis added). In light of Patent Owner's statements, the Board determined that 'Patent Owner failed to file responses to the Petition, which is consistent with abandonment of the contest.' IPR2021-01124, Paper 13 at 2 (Dec. 13, 2022). The Board made a similar finding in the other three related IPRs and entered adverse judgments for each. Id., Paper 14 at 3.

Contrary to the Board, the Director found that Patent...