Apple Inc.v.VirnetX, Inc.

Patent Trial and Appeal Board

Feb 17, 2015

11840560 (P.T.A.B. Feb. 17, 2015)

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 IPR2015-00186
Patent 7,921,211 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

IPR2015-00186
Patent 7,921,211 B2

2

I. BACKGROUND
A. Background
Apple Inc. (“Petitioner”) requests inter partes review of claims 1, 2, 5, 6,
14–17, 19–23, 26–41, 43–47, and 50–60 of U.S. Patent No. 7,921,211 B2 (“the
’211 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 ’211 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 ’211 patent, was time-barred. See Apple Inc. v.
Virnetx, Inc., IPR2013-00397 (PTAB Dec. 18, 2013) (denying Inter Partes Review
of U.S. Patent 7,921,211) Paper 15, reh’g denied, (PTAB Feb. 12, 2014) Paper 20.
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
IPR2015-00186
Patent 7,921,211 B2

3

accompanied by a motion for joinder to IPR2014-00618.” Pet. 3. Petitioner’s
motion for joinder is dismissed because IPR2014-00618 has been terminated.
IPR2014-00618, Paper 11.

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, 5, 6, 14–17, 19–23, 26–41, 43–47, and 50–60 of U.S. Patent
No. 7,921,211 is denied.

IPR2015-00186
Patent 7,921,211 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