APPLE INC. v. VOIP-PAL.COM, INC.

APPLE INC. v. VOIP-PAL.COM, INC., Appeal Nos. 2018-1456, 2018-1457 (Fed. Cir. September 25, 2020).  Before Prost, Reyna, and Hughes.  Appealed from PTAB.  (Claim Preclusion)

Background:

Voip-Pal owns two U.S. patents directed toward producing routing messages for voice over IP communications.  In February 2016, Voip-Pal sued Apple for infringement in the United States District Court for the District of Nevada.  In response, Apple petitioned for inter partes review (“IPR”) of each asserted patent, during which Apple argued that the claims of Voip-Pal’s patents were obvious over a combination of two reference patents.

During the IPRs, three different panels: initial, interim, and final, presided over the IPRs. In February 2020, the final panel upheld a November 2017 decision by the interim panel which found that Apple failed to provide evidentiary support for the alleged motivation to combine the two reference patents in each IPR.  After the decision by the interim panel, the Nevada district court litigation was transferred to the Northern District of California and consolidated with three related cases.  In the consolidated litigation, the California district court required Voip-Pal to narrow the number of claims at issue to 20, and later dismissed the cases upon determining that the representative claims were patent ineligible under 35 USC §101.  In March 2020, the Federal Circuit affirmed the California district court’s decision.  Some of the claims challenged by Apple in the immediate case were thus invalidated under §101.

As a result, Apple requested a directed judgment, contending that the Federal Circuit’s decision to invalidate those claims rendered the immediate case moot in favor of Apple, even with respect to claims that do not overlap with the claims found patent ineligible.

Issue/Holding:

Did the invalidation of the claims in the consolidated litigation render the immediate case moot? (continue reading)

Summary byGary Koo

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