In Apple Inc. v. VOIP-PAL.com, Inc., [2018-1456, 2018-1457] (September 25, 2020), the Federal Circuit affirmed the PTAB’s determination that claims of U.S. Patent No. 8,542,815 and 9,179,005 were not invalid for obviousness, and the PTAB’s imposition of sanctions against VOIP-PAL.<\/p>\n\n\n\n
The ‘815 and ‘005 patents describe the field of invention as \u201cvoice over IP communications and methods and apparatus for routing and billing\u201d and relate to routing communications between two different types of networks\u2014public and private.<\/p>\n\n\n\n
The Federal Circuit noted that the appeal was moot as to 18 claims that a court held were directed to unpatentable subject matter. As to the 15 remaining claims, the Federal Circuit rejected Apple’s argument of mootness, and considered the merits of the non-obviousness determination.<\/p>\n\n\n\n
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Apple argued that the Board violated the Administrative Procedures Act (\u201cAPA\u201d) and its due process rights when the Board imposed non-enumerated sanctions for Voip-Pal\u2019s ex parte communications. The Board’s actions are reviewed for abuse of discretion, and the Board abuses its discretion if the sanction (1) is clearly unreasonable, arbitrary, or fanciful; (2) is based on an erroneous conclusion of law; (3) rests on clearly erroneous fact findings; or (4) involves a record that contains no evidence on which the Board could rationally base its decision.<\/p>\n\n\n\n
37 C.F.R. \u00a7 42.12(b) provides that sanctions “include” those enumerated subsection (b). The Federal Circuit said that “key” here was that Section 42.12(b) uses the term \u201cinclude,\u201d which signifies a non-exhaustive list of sanctions. The Federal Circuit held that the plain reading of Section 42.12(b) provides the Board with discretion to issue sanctions and that the Board did not commit an APA violation when it issued a sanction not explicitly listed under Section 42.12. The Federal Circuit noted that the Board\u2019s decision to (a) allow Apple to petition for rehearing before a new panel, and (b) provide Apple with a meaningful opportunity to respond to Voip-Pal\u2019s letters was a reasonable course of action and one that it would not not disturb, and did not find that Apple was deprived of due process.<\/p>\n\n\n\n
Apple argued on appeal that the Board legally erred in rejecting its motivation-to-combine argument by improperly applying the now-rejected teaching, suggestion, motivation test rather than the flexible obviousness analysis required under KSR. The Federal Circuit found that the Board did not fault Apple for not citing explicit teachings, suggestions, or motivations to combine the prior art. Rather, the Federal Circuit said, the Board noted that Apple\u2019s expert provided only \u201cconclusory and insufficient\u201d reasons for combining the prior art and failed to articulate reasoning with some rational underpinning. The Board did not legally err but rather held Apple to the proper evidentiary standard.<\/p>\n","protected":false},"excerpt":{"rendered":"
In Apple Inc. v. VOIP-PAL.com, Inc., [2018-1456, 2018-1457] (September 25, 2020), the Federal Circuit affirmed the PTAB’s determination that claims of U.S. Patent No. 8,542,815 and 9,179,005 were not invalid for obviousness, and the PTAB’s imposition of sanctions against VOIP-PAL. … Continue reading