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.