Paper 15
`Trials@uspto.gov
`571-272-7822
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`Entered: December 18, 2013
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`APPLE INC.
`Petitioner
`
`v.
`
`VIRNETX, INC.
`Patent Owner
`
`
`
`Case IPR2013-00397
`Patent 7,921,211
`
`
`
`Before SALLY C. MEDLEY, MICHAEL P. TIERNEY, and STEPHEN C. SIU,
`Administrative Patent Judges.
`
`SIU, Administrative Patent Judge.
`
`
`DECISION
`Denying Inter Partes Review
`37 C.F.R. § 42.108
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`IPR2013-00397
`Patent 7,921,211
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`I. BACKGROUND
`
`Petitioner, Apple Inc., filed a Petition on July 1, 2013 requesting inter partes
`review of claims 1-3, 5-8, and 14-60 of US Patent 7,921,211 (“the ’211 Patent”)
`under 35 U.S.C. §§ 311 et seq. Paper 1 (“Pet.”). Patent Owner, Virnetx, et al.,
`submitted a Preliminary Response under 37 C.F.R. § 42.107(b). Paper 11. 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.
`
`
`Related Proceedings
`
`
`According to Petitioner, the ’211 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. 5-6 (discussing the 2010 and 2012 litigation);
`Ex. 2007.
`The ’211 Patent is also the subject of two inter partes reexaminations,
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`numbers 95/001,789 and 95/001,856. Id. Petitioner is the real party of interest in
`the 95/001,789 proceeding. Id. The ’211 Patent is also the subject of inter partes
`review petition IPR2013-00398. Id. Petitioner is the listed petitioner on the
`following related inter partes review proceedings: IPR2013-00348, 00349, 00354,
`00393, 00394, and 00398.
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`IPR2013-00397
`Patent 7,921,211
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`II. ANALYSIS
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`
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`According to Petitioner, Petitioner was served with a complaint alleging
`infringement of the ’211 Patent on two relevant occasions: the 2010 litigation, in
`August of 2010, and the 2012 litigation, in December 2012. Pet. 1-2; 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. 6 (citing Exs.
`2002 (verdict form), 2007 (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 (emphasis omitted). Petitioner argues that
`under the plain language of the statute, 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
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`IPR2013-00397
`Patent 7,921,211
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`following service of the August 2010 complaint expired before it was possible to
`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 (emphasis omitted).
`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 “[wa]s 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, IPR2013-00378, pursuant to 35 U.S.C. § 315(c). See Paper 8
`(“Pe[ti]tioner[’]s Motion for Joinder of Proceedings”). Granting the motion would
`obviate the time bar under 35 U.S.C. § 315 (b). IPR2013-00378, however, has
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`IPR2013-00397
`Patent 7,921,211
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`been terminated. New Bay Capital, LLC v. Virnetx, Inc., IPR2013-00378, Paper 14
`(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 “[wa]s filed more
`than 1 year after the date on which the [P]etitioner . . . [wa]s served with a
`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
`imposed by 35 U.S.C. § 315(b).
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`IV. ORDER
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`
`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 1-3, 5-8, and 14-60 of US Patent 7,921,211is denied.
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`IPR2013-00397
`Patent 7,921,211
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`PETITIONER:
`Jeffrey Kushan
`jkushan@sidley.com
`
`Joseph Micallef
`jmicallef@sidley.com
`
`
`PATENT OWNER:
`Joseph Palys
`joseph.palys@finnegan.com
`
`Naveen Modi
`naveen.modi@finnegan.com
`
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`6
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