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