Director Review: Petitioner must Prove its Case

by Dennis Crouch

Apple Inc. v. Zipit Wireless, Inc., 2022 WL 18108215 (PTO Dir., Dec. 21, 2022)

Back in December, Director Vidal issued an important director review decision holding an IPR challenger must prove that the challenged claims are invalid, even if the patentee raises no defense.  The PTAB appears to have incorrectly treated the situation as more of a default judgment even though the patentee had not expressly abandoned.

Apple filed three IPR petitions against each of two Zipit patents.  The PTAB instituted IPR proceedings in all six.  At that point, Zipit filed patent owner responses in two of the cases, but not in the other four cases.  In its final written decision, the PTAB did not consider the merits of the case, but simply concluded that the patent owner had “abandoned the contest” and treated their lack of opposition as a “request for adverse judgment under 37 C.F.R. § 42.73(b).”

In a sua sponte review of the record, Dir. Vidal noted that Counsel had not expressly abandoned the case, and during the hearing stated that judgment for Apple is appropriate “if the Board determines that they have met their burden of proof with respect to those claims.”  Vidal concluded that “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.” As such, the Board must consider the evidence presented by Apple and determine whether it meets the statutory burden of providing “unpatentability by a preponderance of the evidence.” 35 U.S.C. 316(e).

Read it here:


5 thoughts on “Director Review: Petitioner must Prove its Case

  1. 2

    Right move. But not doing anything would probably have helped the pro-patent people in the long run as the PTAB holding any claim invalid if the patentee doesn’t respond to an instituted IPR is outrageous.

    1. 2.1

      Yeah, that is messed up. The USPTO ought to be standing behind their product, not trashing it.

      1. 2.1.1

        I like that idea; the USPTO should make an employee available in litigation to defend the institution’s honor, just like government defends its other actions in court. Appropriate expert witness fee to the examiner, of course.

      2. 2.1.2


        Two items that intersect and augment your comment (both previously supplied, but dovetail nicely here):

        AIA broke the system instead of fixing anything.

        The AIA purported to introduce a “warranty-like” quality control mechanism that operated solely from a “out of the door” timeframe. That is, entirely after a patent had been granted.

        But anyone who has any real world experience with putting products into the marketplace and dealing with warranty of such products would immediately recognize that cleaving a program of “after market” with NO ties to fixing any root cause is doomed to




        1) the system as put into place generates cash flow to the Office in both pre and post grant regimens, and does so at NO COST to the Patent Office. There simply is no reason for the Patent Office to actually improve quality (and all should recognize that the ONLY Quality that the Patent Office has business in improving is Examination Quality).

        It also should be stressed that improving Examination Quality is just not the same as Saying NO to inNOvation. Reject Reject Reject was tried – did not work. Will not work.

        2) In Oil States, the Supreme Court rewrote patent law and made the Basket of Rights of a granted patent from having attributes of personal property to being a select FORM of personal property…

        (here, for argument’s sake, giving full weight to Greg “I Use My Real Name Except When I Post As Dozens” DeLassus position that “Public License” is a form of personal property)

        … that form being “Public License.”

        As I have postulated previously, ANY such artifact written by the Supreme Court in order to play the game of being able to take a granted patent BACK INTO the domain of the Executive Branch administrative agency (and circumvent an Article III necessary standing), MUST ALSO invoke the properties of a license. That is, there are duties a LicensOR owes to a LicensEE.

        Standing behind the product – and satisfying ALL expectation interests created by the act of Grant (which is historically the meeting of the Quid Pro Quo and turning an inventor’s inchoate right INTO the basket of personal property rights) – is a minimum that should accompany any view of the Grant (in light of Oil States).

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