VoIP-Pal.com prevails in 7 separate IPRs, PTAB finds no evidence of invalidity

By Steve Brachmann
November 22, 2017

On Tuesday, November 21st, North Hollywood, CA-based voice-over Internet protocol (VoIP) telecom firm VoIP-Pal.com Inc. announced that the Patent Trial and Appeal Board (PTAB) had terminated a series of seven inter partes review (IPR) proceedings filed to challenge the validity of patents held by VoIP-Pal. In two final decisions and five decisions on IPR institution, the PTAB panel of administrative patent judges (APJs) found that petitioners Apple and AT&T did not meet the required burden of proof to invalidate two VoIP-Pal patents. In the final written decisions, Apple and AT&T failed to prove invalidity of the challenged claims by a preponderance of the evidence. Similarly, the PTAB found that neither party had shown a reasonable likelihood of invalidity at the institution stage in the other cases. Along with last November’s denial of an IPR petition filed by Unified Patents, the VoIP-Pal patents have been unscathed through a total of eight IPR petitions.

Petitioners Apple and AT&T filed a series of IPR petitions to challenge two patents held by VoIP-Pal:

  • U.S. Patent No. 8542815, titled Producing Routing Messages for Voice Over IP Communications. Issued in September 2013, it covers a process for operating a call routing controller to facilitate communications between callers and callees in a system of nodes associated with callers and callees in a way that provides a more resilient VoIP system.
  • U.S. Patent No. 9179005, same title as the ‘815 patent. It claims a process for producing a routing message for routing communications between a caller and a callee for facilitating the highly resilient VoIP system.

“Many CEOs have called me today and they’ve all come to the conclusion that, through the VoIP-Pal decisions, this might be the beginning of a change towards how the PTAB treats patent owners,” said Emil Malak, VoIP-Pal’s CEO, in a phone interview. “They find the decision, which was made on the merits, incredible. I’m hoping that we at VoIP-Pal have started a trend that will show judgments based on merits rather than a bias towards infringers. I would like to thank everybody involved, including the PTAB, and hopefully this decision represents our entering a new era where patent owners feel that their intellectual property is being dealt with on merits fairly and justly.”

Although the challenged patents still face invalidity challenges in U.S. district court under the Alice standard, clearing the PTAB hurdle is a big accomplishment given the incredibly high rate of patents which are rendered defective by PTAB validity trials. We’ll be following up with more coverage on VoIP-Pal’s victories at the PTAB after the Thanksgiving holiday providing analysis on how VoIP-Pal, represented by counsel from Knobbe Martens, was able to survive the PTAB patent killing fields in this round of IPR trials.

The Author

Steve Brachmann

Steve Brachmann is a writer located in Buffalo, New York. He has worked professionally as a freelancer for more than a decade. He has become a regular contributor to IPWatchdog.com, writing about technology, innovation and is the primary author of the Companies We Follow series. His work has been published by The Buffalo News, The Hamburg Sun, USAToday.com, Chron.com, Motley Fool and OpenLettersMonthly.com. Steve also provides website copy and documents for various business clients.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 6 Comments comments. Join the discussion.

  1. Patent Investor November 22, 2017 3:52 pm

    “Although the challenged patents still face invalidity challenges in U.S. district court under the Alice standard”. Sadly, unless they are in court in the Eastern District of Texas (possibly a handful of others) that sentence might as well read “the challenged patents await invalidity findings in U.S. district court under the Alice standard”. In our pay to play world the big boys rarely lose, much less twice.

  2. Patent Investor November 22, 2017 3:55 pm

    A terribly small amount of research shows they filed in Nevada, interesting choice of venue!!

  3. Paul F. Morgan November 23, 2017 10:29 am

    The fact that 5 out of 7 IPR petitions here never even got to first base to even start an IPR is another good sign that the PTAB is effectively responding to complaints about the infrequent but sometimes egregious situations of plural IPR petitions filed against the same patents. As per the recent PTAB “precedent” decisions on that.
    AS PI notes, since IPRs cannot address Alice-101 or 112 issues, those 2 IPR decisions are not relevant to their D.C. cases on those grounds. But estoppels apply to raising any prior art patents or publications they could have raised in those IPRs even if they did not do so. But not as to prior art products.

  4. Robert Green November 23, 2017 11:40 am

    This is s big victory for Voip-pal and could pave the way for billions of dollars in damages and patient infridgements. Its going to be interesting to watch how this unfolds in the next few weeks or months.

  5. Paul F. Morgan November 23, 2017 2:18 pm

    This company also claims an ITC exclusion order patent victory, which may lead to product de-featuring by the defendants since like most electronic products it is imported. Presumably that ITC decision is on appeal to the Fed. Cir.?

  6. Michael Smith November 24, 2017 2:14 pm

    The PTAB’s decision to uphold all of the challenged claims by Apple and deny institution for the remaining 5 IPR’s by AT&T and Apple is HUGE. The gravity cannot be understated.

    VPLM is the little engine that could; the David to Silicon’s Goliath. VPLM is a perfect example of how the little guy can win on the MERIT.

    The outcome of these IPRs is a testament to how the PTAB system can work if Administrative Judges are fair and impartial and focus their expertise on looking at the merits of the claim and the patents themselves.

    For too long Silicon Valley companies such as Apple, Google, Unified Patents and others have had their way with smaller companies via the protective umbrella of the PTAB (all eyes on you Michelle Lee ex Google employee!).

    Now lets see how long it will take mainstream media to cover what should be the victory of the year in the patent world.

    Congratulations to VPLM!

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