Apple Inc.v.Virnetx, Inc. and Science Application International Corporation

Patent Trial and Appeal Board

Dec 13, 2013

09504783 (P.T.A.B. Dec. 13, 2013)

Trials@uspto.gov Paper 14
Tel: 571-272-7822 Entered: December 13, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

APPLE INC.
Petitioner

v.

VIRNETX, INC. and SCIENCE APPLICATION INTERNATIONAL
CORPORATION
Patent Owner

Case IPR2013-00349
Patent 6,502,135

Before SALLY C. MEDLEY, KARL D. EASTHOM, and STEPHEN C. SIU,
Administrative Patent Judges.

EASTHOM, Administrative Patent Judge.

DECISION
Denying Inter Partes Review
37 C.F.R. § 42.108
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Patent 6,502,135

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I. BACKGROUND

Petitioner, Apple Inc., filed a Petition on June 12, 2013 requesting inter
partes review of claims 1-10, 12-15, and 18 of U.S. Patent No. 6,502,135 under 35
U.S.C. §§ 311-319. Paper 1 (“Pet.”). Patent Owner, “Virnetx et al.,” submitted a
Preliminary Response under 37 C.F.R. § 42.107(b). Paper 10. The Board has
jurisdiction under 35 U.S.C. § 314.
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), and therefore, the
Board declines to institute an inter partes review.

A. Related Proceedings
According to Petitioner, the ’135 Patent is the subject of a number of civil
actions, two of which are at issue here, as follows: VirnetX Inc. v. Cisco Systems,
Inc. et al., Civ. Act. No. 6:10-cv-00417-LED (E.D. Tex., filed Aug. 11, 2010) (the
“2010 litigation”); and VirnetX Inc. v. Apple Inc., Civ. Act. No. 6:12-cv-00855-
LED (E.D. Tex., filed Nov. 6, 2012) (the “2012 litigation”). See Pet. 3-4 (listing
other related actions); Prelim. Resp. 6-7 (discussing the 2010 and 2012 litigation);
Ex. 2006.
The ’135 Patent also is the subject of merged inter partes reexamination
numbers 95/001,679 and 95/001,682. Petitioner is the real party of interest in the
latter proceeding. The ’135 Patent also is the subject of inter partes review
petition IPR2013-00348. Id. Petitioner is the listed petitioner on the following
related inter partes review proceedings: IPR2013-00348, -354, -393, -394, -397,
and -398.

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Patent 6,502,135

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II. ANALYSIS
According to Petitioner, Petitioner was served with a complaint alleging
infringement of the ’135 Patent on two relevant occasions, the 2010 litigation, in
August 2010, and the 2012 litigation, in December 2012. Pet. 1; see Related
Proceedings supra. The earlier complaint was served more than one year before
Petitioner filed the present Petition, the latter, less than one year. Regarding the
earlier complaint, according to Patent Owner and cited exhibits of record, “a jury
upheld the validity of the asserted claims in the 2010 litigation, and the district
court entered judgment finding those claims valid.” Prelim Resp. 7 (citing Exs.
2002 (verdict form), 2006 (final judgment)).
Section 315(b) of Title 35 of the United States Code follows:
(b) PATENT OWNER’S ACTION.—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, real party in interest,
or privy of the petitioner is served with a complaint alleging
infringement of the patent. The time limitation set forth in the
preceding sentence shall not apply to a request for joinder under
subsection (c).
Petitioner argues that its Petition is timely because it was filed less than one
year after the date on which it was served with “any complaint”—i.e., the
complaint in the 2012 litigation. Pet. 2. Petitioner argues that under the plain
language of section 315(b), filing a petition within one year of “any complaint,”
such as the December 2012 complaint, nullifies the effect of the earlier, August
2010 complaint, on the timeliness of this Petition. See id.
In addition to arguing that the plain language of the statute supports its
position, Petitioner presents other arguments: Precluding the inter partes review
“would be particularly unjust in this case. . . . [because] [t]he 1-year period
following service of the August 2010 complaint expired before it was possible to
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submit an IPR petition;” that requiring the filing of an inter partes review within
one year of a petitioner being served with “a complaint” would allow a patent
owner to “gam[e] the system;” and that “Congress designed the IPR authority to be
[an] option to contest validity of a patent concurrently with the district court
proceedings involving the same patent.” Pet. at 2-3.
Notwithstanding the arguments, the earlier complaint remains “a complaint”
under the statute. The plain language of the statute does not specify that a later
complaint will nullify the effect of an earlier complaint for timeliness purposes of a
petition. Petitioner does not dispute that the Petition “was filed more than 1 year
after the date on which the [P]etitioner . . . [wa]s served with a complaint alleging
infringement of the patent.” See 35 U.S.C. § 315 (b). Therefore, according to the
statute, “[a]n inter partes review may not be instituted.” See id.
“It is well settled law that the plain and unambiguous meaning of the words
used by Congress prevails in the absence of a clearly expressed legislative intent to
the contrary.” Hoechst Aktiengesellschaft v. Quigg, 917 F.2d 522, 526 (Fed. Cir.
1990). Petitioner does not explain persuasively how allowing a review outside the
statutory one year limit based on the filing of another complaint corresponds to a
“clearly expressed legislative intent” that prevails over the plain meaning. See
Universal Remote Control v. Universal Electronics, Inc., IPR 2013-00168, Paper
9 (PTAB Aug. 26, 2013) (cited at Prelim. Resp. 9 for similar reasons).
The timeliness limitation of 35 U.S.C. § 315(b) does not apply to a request
for joinder. As such, Petitioner filed a motion to join the instant proceeding with
another proceeding, IPR2013-00375, pursuant to 35 U.S.C. 315(c). See Paper 7
(“Petitioner’s Motion for Joinder of Proceedings”). Granting the motion would
obviate the time bar under 35 U.S.C. § 315 (b). The IPR2013-00375 proceeding,
however, has been terminated. New Bay Capital, LLC v. Virnetx, Inc., IPR2013-
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Patent 6,502,135

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00375, Paper 16 (PTAB Nov. 12, 2013). Accordingly, Petitioner’s motion for
joinder is dismissed.
Based on the foregoing discussion, pursuant to 35 U.S.C. § 315(b), “[a]n
inter partes review may not be instituted,” because the Petition “was filed more
than 1 year after the date on which the [P]etitioner . . . [wa]s served with a
complaint alleging infringement of the patent.”
III. CONCLUSION
The Board denies the Petition because it was not filed within the time limit
imposed by 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 1-10, 12-15, and 18 of U.S. Patent No. 6,502,135 is denied.

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For Petitioner Apple Inc.:

Jeffrey P. Kushan
Joseph A. Micallef
SIDLEY AUSTIN LLP
jkushan@sidley.com
jmicallef@sidley.com

For Patent Owner VirnetX, Inc.:
Joseph E. Palys
Naveen Modi
FINNEGAN, HENDERSON, FARABOW
GARRETT & DUNNER, L.L.P.
joseph.palys@finnegan.com
naveen.modi@finnegan.com