`
`Trials@uspto.gov
`571-272-7822
`
`Paper 78
`Entered: August 3, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`VOIP-PAL.COM, INC.,
`Patent Owner
`____________
`
`Cases IPR2016-01198 and IPR2016-01201
`Patents 9,179,005 B2 and 8,542,815 B2
`____________
`
`
`Before SCOTT R. BOALICK, Chief Administrative Patent Judge,
`JACQUELINE WRIGHT BONILLA, Deputy Chief Administrative Patent Judge,
`and MICHAEL P. TIERNEY, Vice Chief Administrative Patent Judge.
`
`BOALICK, Chief Administrative Patent Judge.
`
`
`
`
`DECISION
`Dismissing certain claims
`37 C.F.R. § 42.721
`
`
`
`
`
`
`1 This decision pertains to both IPR2016-01198 and IPR2016-01201, as the
`appeals from those proceedings were consolidated and the issues before us now
`span both proceedings. Citations are to the paper numbers in IPR2016-01198.
`
`
`
`IPR2016-01198 (Patent 9,179,005 B2)
`IPR2016-01201 (Patent 8,542,815 B2)
`
`
`
`I. BACKGROUND
`On November 20, 2017, the Board issued a Final Written Decision in each
`of these proceedings. Paper 53 (“Final Written Decision”). On December 21,
`2018, we entered an Order granting-in-part a motion for sanctions filed by
`Petitioner Apple Inc. (“Petitioner”). Paper 70 (“Sanctions Order”). As part of the
`Sanctions Order, we authorized Petitioner to file a request for rehearing of the
`Final Written Decisions entered on November 20, 2017. Order 13–16. Following
`the parties’ briefing, we denied Petitioner’s request for rehearing. Paper 75.
`On appeal, the Federal Circuit determined that these proceedings were moot
`as to claims deemed patent ineligible under 35 U.S.C. § 101 in a prior appeal of a
`district court judgment, Voip-Pal.com, Inc. v. Twitter, Inc., 798 F. App’x 644 (Fed.
`Cir. 2020). Apple Inc. v. Voip-Pal.com, Inc., 976 F.3d 1316, 1321 (Fed.
`Cir. 2020). Thus, the Court vacated our Final Written Decisions as to those
`“overlapping claims”—claims 1, 7, 27, 28, 72, 73, 92, and 111 of U.S. Patent No.
`8,542,815 B2 (“the ’815 patent”) and claims 49, 73, 74, 75, 77, 78, 83, 84, 94, 96,
`and 99 of U.S. Patent No. 9,179,005 B2 (“the ’005 patent”). 976 F.3d at 1321.
`The Federal Circuit directed us to dismiss the Petitions as to those claims. Id.
`(citing United States v. Munsingwear, Inc., 340 U.S. 36, 39-41 (1950)), 1326. The
`Federal Circuit affirmed the Board’s non-obviousness determinations as to the
`remaining claims in these proceedings, and affirmed the Board’s Sanctions Order.
`Id. at 1326.
`
`II. ANALYSIS
`As directed by the Federal Circuit, we dismiss the Petition in
`IPR2016-01201 as to claims 1, 7, 27, 28, 72, 73, 92, and 111 of the ’815 patent and
`
`
`
`2
`
`
`
`IPR2016-01198 (Patent 9,179,005 B2)
`IPR2016-01201 (Patent 8,542,815 B2)
`
`dismiss the Petition in IPR2016-01198 as to claims 49, 73, 74, 75, 77, 78, 83, 84,
`94, 96, and 99 of the ’005 patent. 37 C.F.R. § 42.72.
`
`III. ORDER
`
`It is, therefore,
`ORDERED that the Petition in IPR2016-01198 is dismissed as to claims 49,
`73, 74, 75, 77, 78, 83, 84, 94, 96, and 99 of the ’005 patent; and
`FURTHER ORDERED that the Petition in IPR2016-01201 is dismissed as
`to claims 1, 7, 27, 28, 72, 73, 92, and 111 of the ’815 patent.
`
`
`
`
`
`
`
`3
`
`
`
`IPR2016-01198 (Patent 9,179,005 B2)
`IPR2016-01201 (Patent 8,542,815 B2)
`
`
`PETITIONER:
`Adam P. Seitz
`Eric A. Buresh
`Paul R. Hart
`ERISE IP, P.A.
`adam.seitz@eriseip.com
`Eric.Buresh@eriseip.com
`Paul.Hart@eriseip.com
`
`PATENT OWNER
`Kevin N. Malek
`MALEK MOSS PLLC
`kevin.malek@malekmoss.com
`Kerry Taylor
`John M. Carson
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2KST@knobbe.com
`2jmc@knobbe.com
`
`
`
`4
`
`
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