Director Vidal's sua sponte Director Review decision of
The adverse judgments, and the Board's reasoning for entering them, prompted Director Vidal's sua sponte precedential decision. In the decision, Director Vidal questioned the Board's interpretation of the Zipit council's statements to imply an unequivocal abandonment of the contest. Instead, the Director interpreted Zipit's statements to mean that Zipit wanted the Board to weigh
The decision provides some clarity regarding whether a patent owner must formally respond to all IPRs instituted against them or risk abandonment of contest. Director Vidal's decision suggests a patent owner may participate in one or more IPRs while asserting that the Board must still follow the procedural standard of determining unpatentability by a preponderance of evidence for the remaining IPRs, regardless of whether a response is filed.
Perhaps more importantly, this decision provides an important practice point: all parties participating in an IPR must choice their words wisely. As evident from the Director's need to issue a decision clarifying the statements of record, failing to clearly express your parties' intentions can result in a costly outcome. Expressing clear intent can maximize the chance that the PTAB makes procedural rules according to the parties' wishes.
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