Voip-Pal Responds to Apple’s Inter Partes Review Petitions
November 22, 2016 -- Voip-Pal.com, Inc. (“Voip-Pal,” the “Company”) (OTCQB:VPLM) is pleased to announce that on November 18, 2016, the Patent Trial and Appeal Board (“PTAB”) of the United States Patent and Trademark Office (“USPTO”) declined to institute an Inter Partes Review (“IPR”) filed by Unified Patents Inc. against Voip-Pal’s Routing, Billing and Rating (“RBR”) Patents, Patent No. 8,542,815 (“815”) and Patent No. 9,179,005.
“We are pleased that the PTAB confirmed that the allegations made by Unified Patents are completely without merit,” said Emil Malak, CEO of Voip-Pal. The decision cannot be appealed by Unified Patents.
On November 21, 2016, the PTAB issued its decisions to institute two Inter Partes Reviews (“IPRs”), IPR2016-01201 and IPR2016-1198, filed by Apple Inc. ("Apple") against the ‘815 and ‘005 Patents. The PTAB indicated that its decision is preliminary in nature: "At this preliminary stage, the PTAB has not made a final determination with respect to the patentability of the challenged claims or any underlying factual and legal issues."
By instituting the IPRs, the PTAB has decided that a full review process is necessary to fully vet the arguments of both parties, and to resolve certain factual and/or legal issues before reaching a final decision. While Voip-Pal is disappointed that the PTAB considered it necessary to conduct this detailed review, it is not surprising given the complexity of certain technical and historical issues.
In its response to Apple’s IPR petition, Voip-pal strongly argued that Apple has fundamentally misunderstood key aspects of the primary reference, and has mischaracterized its proposed combination of the primary reference with each of the secondary references. Given the opportunity to now present evidence from its own experts, Voip-Pal expects to prevail in showing that Apple’s fundamental errors undermine the allegations made by Apple.
Also, as Voip-Pal noted in its preliminary responses to the PTAB, both of the grounds asserted by Apple in its IPR petitions rely on secondary references that are not prior art to the RBR patents. Voip-Pal fully expects to antedate (i.e. "swear behind") these references based on evidence that was not considered by the PTAB.
Finally, the PTAB's decision indicates that certain arguments made by Voip-Pal will require additional support, which would typically be submitted in the form of expert declarations during the proceedings. In particular, the PTAB indicates that evidence is required to support Voip-Pal's contention that the primary reference discloses a scheme that is incompatible with the methods disclosed by the secondary references, (Voip-Pal has retained experts to provide evidence in support of its contentions).
“Voip-Pal will vigorously advance its position and will file additional evidence before the PTAB, where we ultimately expect to be successful in showing that Apple’s petitions lack merit,” said Emil Malak, CEO.
Mr. Malak continued, "We acknowledge the concerns of the many irate Voip-Pal shareholders who see different treatment between the detailed factual analysis that accompanied the decision not to institute the Unified Patents Inter Partes Review (IPR) on Friday and the lack of analysis, by the same panel, for the decision to institute the Apple IPR's dealing with the same patent on Monday. While we recognize the apparent disparity, we want to assure shareholders that the Inter Partes Review is a judicial, not a political process, and we are confident that the technical merit of the patents will prevail in the hearings."