Trials@uspto.gov
`Tel: 571-272-7822
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`Paper 20
`Entered: December 13, 2013
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`
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`_____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`APPLE INC.
`Petitioner
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`v.
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`VIRNETX, INC. and SCIENCE APPLICATION INTERNATIONAL
`CORPORATION
`Patent Owner
`
`
`
`Case IPR2013-00354
`Patent 7,490,151
`
`
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`Before SALLY C. MEDLEY, KARL D. EASTHOM, and STEPHEN C. SIU,
`Administrative Patent Judges.
`
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`EASTHOM, Administrative Patent Judge.
`
`
`DECISION
`Denying Inter Partes Review
`37 C.F.R. § 42.108
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`
`
`
`
`

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`IPR2013-00354
`Patent 7,490,151
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`I. BACKGROUND
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`Petitioner, Apple Inc., filed an amended Petition on June 19, 2013 requesting
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`inter partes review of claims 1-16 of U.S. Patent No. 7,490,151 under 35 U.S.C.
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`§§ 311-319 Paper 8 (“Pet.”). Patent Owner, “Virnetx et al.,” submitted a
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`Preliminary Response under 37 C.F.R. § 42.107(b). Paper 15. The Board has
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`jurisdiction under 35 U.S.C. § 314.
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`For the reasons that follow, the Board determines that the Petition was not
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`filed timely within the statutory period of 35 U.S.C. § 315(b), and therefore, the
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`Board declines to institute an inter partes review.
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`Related Proceedings
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`
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`According to Petitioner, the ’135 Patent is the subject of a number of civil
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`actions, two of which are at issue here, as follows: VirnetX Inc. v. Cisco Systems,
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`Inc. et al., Civ. Act. No. 6:10-cv-00417-LED (E.D. Tex., filed Aug. 11, 2010) (the
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`“2010 litigation”); and VirnetX Inc. v. Apple Inc., Civ. Act. No. 6:12-cv-00855-
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`LED (E.D. Tex., filed Nov. 6, 2012) (the “2012 litigation”). See Pet. 3-4 (listing
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`other related actions); Prelim. Resp. 6-7 (discussing the 2010 and 2012 litigation);
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`Ex. 2006.
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`The ’151 Patent also is the subject of merged inter partes reexamination
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`numbers 95/001,679 and 95/001,714. Id. Petitioner is the real party of interest in
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`the former proceeding. Id. Petitioner is the listed petitioner on the following
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`related inter partes review proceedings: IPR2013-00348, -349, -393, -394, -397,
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`2
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`and -398.
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`

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`IPR2013-00354
`Patent 7,490,151
`
`II. ANALYSIS
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`According to Petitioner, Petitioner was served with a complaint alleging
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`infringement of the ’151 Patent on two relevant occasions, the 2010 litigation, in
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`August 2010, and the 2012 litigation, in December 2012. Pet. 1; see Related
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`Proceedings supra. The earlier complaint was served more than one year before
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`Petitioner filed the present Petition, the latter, less than one year. Regarding the
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`earlier complaint, according to Patent Owner and cited exhibits of record, “a jury
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`upheld the validity of the asserted claims in the 2010 litigation, and the district
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`court entered judgment finding those claims valid.” Prelim Resp. 7 (citing Exs.
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`2002 (verdict form), 2006 (final judgment)).
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`Section 315(b) of Title 35 of the United States Code follows:
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`(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).
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`Petitioner argues that its Petition is timely because it was filed less than one
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`year after the date on which it was served with “any complaint”—i.e., the
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`complaint in the 2012 litigation. Pet. 2. Petitioner argues that under the plain
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`language of section 315(b), filing a petition within one year of “any complaint,”
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`such as the December 2012 complaint, nullifies the effect of the earlier, August
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`2010 complaint, on the timeliness of this Petition. See id.
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`In addition to arguing that the plain language of the statute supports its
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`position, Petitioner presents other arguments: Precluding the inter partes review
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`“would be particularly unjust in this case. . . . [because] [t]he 1-year period
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`following service of the August 2010 complaint expired before it was possible to
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`3
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`

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`IPR2013-00354
`Patent 7,490,151
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`submit an IPR petition;” that requiring the filing of an inter partes review within
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`
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`one year of a petitioner being served with “a complaint” would allow a patent
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`owner to “gam[e] the system;” and that “Congress designed the IPR authority to be
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`[an] option to contest validity of a patent concurrently with the district court
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`proceedings involving the same patent.” Pet. at 2-3.
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`Notwithstanding the arguments, the earlier complaint remains “a complaint”
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`under the statute. The plain language of the statute does not specify that a later
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`complaint will nullify the effect of an earlier complaint for timeliness purposes of a
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`petition. Petitioner does not dispute that the Petition “was filed more than 1 year
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`after the date on which the [P]etitioner . . . [wa]s served with a complaint alleging
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`infringement of the patent.” See 35 U.S.C. § 315 (b). Therefore, according to the
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`statute, “[a]n inter partes review may not be instituted.” See id.
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`“It is well settled law that the plain and unambiguous meaning of the words
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`used by Congress prevails in the absence of a clearly expressed legislative intent to
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`the contrary.” Hoechst Aktiengesellschaft v. Quigg, 917 F.2d 522, 526 (Fed. Cir.
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`1990). Petitioner does not explain persuasively how allowing a review outside the
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`statutory one year limit based on the filing of a second complaint corresponds to a
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`“clearly expressed legislative intent” that prevails over the plain meaning. See
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`Universal Remote Control v. Universal Electronics, Inc., IPR 2013-00168, Paper
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`9 (PTAB Aug. 26, 2013) (cited at Prelim. Resp. 9 for similar reasons).
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`The timeliness limitation of 35 U.S.C. § 315(b) does not apply to a request
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`for joinder. As such, Petitioner filed a motion to join the instant proceeding with
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`another proceeding, IPR2013-00376, pursuant to 35 U.S.C. 315(c). See Paper 12
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`(“Petitioner’s Motion for Joinder of Proceedings”). Granting the motion would
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`obviate the time bar under 35 U.S.C. § 315 (b). The IPR2013-00376 proceeding,
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`however, has been terminated. New Bay Capital, LLC v. Virnetx, Inc., IPR2013-
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`4
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`

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`IPR2013-00354
`Patent 7,490,151
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`00376, Paper 17 (PTAB Nov. 12, 2013). Accordingly, Petitioner’s motion for
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`joinder is dismissed.
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`Based on the foregoing discussion, pursuant to 35 U.S.C. § 315(b), “[a]n
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`inter partes review may not be instituted,” because the Petition “was filed more
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`than 1 year after the date on which the [P]etitioner . . . [wa]s served with a
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`complaint alleging infringement of the patent.”
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`III. CONCLUSION
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`The Board denies the Petition because it was not filed within the time limit
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`imposed by 35 U.S.C. § 315(b).
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`IV. ORDER
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`For the reasons given, it is
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`ORDERED that Petitioner’s motion for joinder is dismissed; and
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`FURTHER ORDERED that the Petition challenging the patentability of
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`claims 1-16 of U.S. Patent No. 7,490,151 is denied.
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`5
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`IPR2013-00354
`Patent 7,490,151
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`For Petitioner Apple Inc.:
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`Jeffrey P. Kushan
`Joseph A. Micallef
`SIDLEY AUSTIN LLP
`jkushan@sidley.com
`jmicallef@sidley.com
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`
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`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
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`6
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