976 F.3d 1316
Fed. Cir.2020Background
- Voip-Pal owns U.S. Pat. Nos. 8,542,815 and 9,179,005 concerning routing messages for VoIP between public and private networks.
- Apple filed IPR petitions challenging multiple claims of those patents as obvious over Chu ’684 and Chu ’366; the PTAB instituted review and an Interim Panel issued final written decisions finding the challenged claims not obvious.
- Voip‑Pal’s CEO sent six ex parte letters to Board members and other officials (not to Apple); Apple moved for sanctions and sought vacatur or adverse judgment.
- A Final Panel found the letters sanctionable but declined to enter judgment for Apple, instead providing a remedial process (rehearing opportunity) and denying rehearing on the merits.
- Separately, a district court dismissed asserted representative claims under §101, and this court affirmed in Voip‑Pal.com, Inc. v. Twitter, rendering 19 claims in the IPR overlapping with Twitter ineligible and moot for this appeal.
- The Federal Circuit vacated the Board’s non-obviousness decisions as to those 19 overlapping claims, affirmed the Board as to the remaining claims, and affirmed the Board’s sanctions orders.
Issues
| Issue | Apple’s Argument | Voip‑Pal’s Argument | Held |
|---|---|---|---|
| Mootness of overlapping claims after Twitter §101 decision | Overlapping claims are moot and Board decisions should be vacated | The appeal remains live for nonoverlapping claims; any preclusion questions are for future courts | Overlapping claims (19) are moot; Board decisions as to them vacated and remanded to dismiss; nonoverlapping claims remain justiciable |
| Whether Board exceeded authority under 37 C.F.R. §42.12 by imposing an unlisted sanction (APA) | Board was limited to the eight listed sanctions and thus exceeded its authority | §42.12(b) is non‑exhaustive (uses “include”), Board has discretion to craft sanctions | Regulation is non‑exhaustive; Board did not violate the APA by issuing its chosen sanction |
| Due process: whether Apple was entitled to de novo proceedings/new panel or adverse judgment | Ex parte letters tainted proceedings; Apple entitled to reversal/adverse judgment or new panel to protect property/due process rights | Board gave notice, put letters into the record, permitted response at rehearing stage; Apple waived new due process theories on appeal | No due process violation; Apple waived several asserted property‑interest arguments; Board’s remedial choice was within discretion |
| Non‑obviousness (motivation to combine Chu ’684 and Chu ’366) | A skilled artisan would have been motivated to combine because Chu ’684 had a dialing deficiency remedied by Chu ’366 | Chu ’684 lacked any dialing deficiency; Voip‑Pal’s expert testimony was credited | Substantial evidence supports Board’s finding that Apple failed to show a motivation to combine; Board’s non‑obviousness rulings affirmed for the nonoverlapping claims |
Key Cases Cited
- KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007) (announcing the flexible, common‑sense obviousness inquiry)
- United States v. Munsingwear, Inc., 340 U.S. 36 (1950) (vacatur of lower‑court judgment when case becomes moot on appeal)
- Momenta Pharm., Inc. v. Bristol‑Myers Squibb Co., 915 F.3d 764 (Fed. Cir. 2019) (mootness deprives court of jurisdiction over merits)
- In re Kahn, 441 F.3d 977 (Fed. Cir. 2006) (obviousness rejections require articulated reasoning with a rational underpinning)
- Abrutyn v. Giovanniello, 15 F.3d 1048 (Fed. Cir. 1994) (standard for abuse of discretion in sanctions and caution against extreme sanctions as first resort)
- WesternGeco LLC v. ION Geophysical Corp., 889 F.3d 1308 (Fed. Cir. 2018) (review standards: de novo for ultimate obviousness, substantial evidence for factual findings)