Apple Denied Inter Partes Review

(Alexandria, VA – Wednesday, February 12, 2014) The Patent Trial and Appeal Board refused to apply Apple, Inc’s reading of the one year time limitation on inter partes review. See 35 U.S.C. § 315(b). Virnetx, Inc. and Science Application International Corporation commenced patent infringement actions against Apple, Inc. in 2010 and 2012 for infringement of U.S. Patent No. 6,502,135 in the Eastern District of Texas. During the 2010 litigation, an Eastern District of Texas jury found the patent claims were valid and that Apple infringed. During the 2012 litigation, Apple, Inc. filed for inter partes review which was denied because it was not timely filed. According to the PTO Apple had failed to bring the action within one year of receiving a complaint on the claims in question. Apple, Inc. appealed the decision on the basis that it had filed for inter partes review within one year of receiving the 2012 complaint, but Apple was again denied. The Board determined that “Congress did not intend to allow a defendant to lose a patent infringement suit in district court, and then file an IPR petition challenging the same patent…” Because Apple failed to file for inter partes review within one year of receiving the 2010 complaint, Apple would not be allowed a second bite of the validity apple before the PTO regarding the 2012 complaint. The Board pointed out that Congress’s purpose in barring inter partes review after one year was to promote a level of finality for patent holders or “quiet title,” and Apple’s reading contradicts that purpose. “[A] patent holder who has won a district court infringement suit [can] obtain investment funding, and, if necessary, enforce its patent by suing a serial infringer without fear of a later administrative attack that challenges the same patent.” See Apple, Inc. v. Virnetx, Inc., et al., Case IPR2013-00348 (Inter Partes Review Denied).