In a precedential order, Vidal vacated the Patent Trial and Appeal Board’s decisions determining that the owner of the patents, Zipit Wireless Inc., had declined to defend its patents after the PTAB instituted “inter partes” reviews. Zipit told the PTAB that it wouldn’t oppose four of Apple’s six petitions if the board determined that Apple’s claims had enough proof to sustain its challenges.
Vidal said in her decision that she didn’t interpret Zipit’s statement to mean it was unequivocally abandoning its defense of the challenged patent claims. Rather, she said, Zipit’s statement was contingent on the PTAB finding Apple had met its burden to show the patents are invalid.
She sent the decision back to the board to have Zipit clarify that question or else to issue a final written decision on the patentability of the challenged claims.
Last June, Apple challenged claims in Zipit’s U.S. Patents No. 7,894,837 and 7,292,870, both of which deal with an instant messaging terminal adapted for wi-fi access points.
The petitions followed an April procedural win for Apple in parallel infringement litigation after the Federal Circuit found a California federal district court had wrongly declined to hear Apple’s suit seeking a declaratory judgment that it hadn’t infringed the patents. Apple and Zipit communicated for three years about the possibility of Apple buying a license from Zipit before Zipit sued the tech giant in 2020 in a Georgia federal court.
Representatives for Apple and Zipit didn’t immediately respond to request for comment.
