Apple Inc.v.VirnetX Inc.Download PDFPatent Trial and Appeal BoardFeb 17, 201510259494 (P.T.A.B. Feb. 17, 2015) Copy Citation Trials@uspto.gov Paper 11 571-272-7822 Date: February 17, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE _____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ APPLE INC. Petitioner v. VIRNETX INC. Patent Owner ____________ Case IPR2015-00187 Patent 7,490,151 B2 ____________ Before MICHAEL P. TIERNEY, KARL D. EASTHOM, and STEPHEN C. SIU, Administrative Patent Judges. SIU, Administrative Patent Judge. DECISION Denying Inter Partes Review 37 C.F.R. § 42.108 IPR2015-00187 Patent 7,490,151 B2 2 I. BACKGROUND A. Background Apple Inc. (“Petitioner”) requests inter partes review of claims 1, 2, 6–8, and 12–14 of U.S. Patent No. 7,490,151 (“the ’151 Patent,” Ex. 1001) pursuant to 35 U.S.C. §§ 311 et seq. VirnetX Inc. (“Patent Owner”) filed a Preliminary Response (“Prelim. Resp.”) on January 16, 2015. Paper No. 10. For the reasons that follow, the Board determines that the Petition was not filed timely within the statutory period of 35 U.S.C. § 315(b). Therefore, we decline to institute an inter partes review. II. ANALYSIS Petitioner states that “[t]he ’151 patent was asserted against Petitioner in proceedings alleging infringement more than one year ago.” Pet. 3. Title 35 of the United States Code, § 315(b), states that an “inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner . . . is served with a complaint alleging infringement of the patent.” For an analysis of the time bar issue pursuant to 35 U.S.C. § 315(b), we refer to, and incorporate by reference, the Board’s previous decision holding that an earlier petition filed by Apple, a real party-in-interest in a proceeding challenging the ’151 patent, was time-barred. See Apple Inc. v. Virnetx, Inc., IPR2013-00354 (PTAB Dec. 13, 2013) (denying Inter Partes Review of U.S. Patent 7,490,151) Paper 20, reh’g denied (PTAB Feb. 12, 2014) Paper 24. Hence, pursuant to 35 U.S.C. § 315(b), we do not institute inter partes review. Petitioner argues that “the one-year period in 35 U.S.C. § 315(b) does not apply to this petition pursuant to 35 U.S.C. § 315(c)” “because this petition is accompanied by a motion for joinder to IPR2014-00610.” Pet. 3. Petitioner’s IPR2015-00187 Patent 7,490,151 B2 3 motion for joinder is dismissed because IPR2014-00610 has been terminated. IPR2014-00610, Paper 19. III. CONCLUSION Institution of inter partes review is denied because the Petition was not filed within the time limit pursuant to 35 U.S.C. § 315(b). IV. ORDER For the reasons given, it is ORDERED that Petitioner’s motion for joinder is dismissed; and FURTHER ORDERED that the petition challenging the patentability of claims 1, 2, 6–8, and 12–14 of U.S. Patent No. 7,490,151 is denied. IPR2015-00187 Patent 7,490,151 B2 4 For PETITIONER: Jeffery P. Kushan jkushan@sidley.com Joseph A. Micallef jmicallef@sidley.com For PATENT OWNER: Joseph E. Palys josephpalys@paulhastings.com Naveen Modi naveenmodi@paulhastings.com Jason E. Stach jason.stach@finnegan.com Copy with citationCopy as parenthetical citation