Tuesday, 08 March 2016 19:13

Circumventing the IPR Statute of Limitations via Discretionary Joinder

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In an ongoing dispute between VirnetX Inc. vs. Apple Inc., Apple Inc. had challenged the validity of two asserted VirnetX patents (US Patent Nos. 6,502,135 and 7,490,151).  Apple was initially unsuccessful in its IPR institution requests, because it was time barred under the IPR statute of limitations, which requires a PTAB IPR challenge to be brought within 1-year from the date that the complaint is served on the defendant.  After several failed attempts, Apple Inc. recently circumvented the IPR statute of limitations, via 35 U.S.C. 315(c) joinder to another petitioner, The Mangrove Partners Master Fund, Ltd.

As some background, an inter partes review, or IPR, is an administrative post grant proceeding whereby a third party petitioner may attempt to invalidate one or more claims of an issued patent owned by a patentee, at the Patent Trial and Appeal Board (PTAB), based on evidence of published prior art.  Where a third party is a named defendant in an action involving that issued patent, a time limitation of one year is imposed on the third party complainant to bring an IPR proceeding before the PTAB, from the time the initial complaint is served, pursuant to 35 U.S.C. 315(b) --

(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).

However, one exception to this time limitation, is a discretionary joinder under 35 U.S.C. 315(c) --

(c) Joinder - If the Director institutes an inter partes review, the Director, in his or her discretion, may join as a party to that inter partes review any person who properly files a petition under section 311 that the Director, after receiving a preliminary response under section 313 or the expiration of the time for filing such a response, determines warrants the institution of an inter partes review under section 314.

In this case, the PTAB instituted Apple's request for joinder, because it met with the burden of proving that it was entitled to relief, specifically, that Apple's petition relies on the same grounds as those instituted by the PTAB in the Mangrove IPR, and further: (i) the same schedule for various proceedings can be adopted, (ii) Apple is not advancing any new expert testimony, and thus, discovery will not be impacted by joinder, and (iii) joinder will not materially affect the range of issues needing to be addressed by the Board and by the parties in the joined proceedings.

For more on these cases visit http://ptabtrials.uspto.gov/ and type in the two Patent Nos. above.

Read 2627 times Last modified on Tuesday, 08 March 2016 21:07
Tony Guo

As a Registered Patent Attorney, Mr. Guo concentrates his practice in Patent Prosecution and Intellectual Property Litigation.  Mr. Guo has considerable hardware and software development experience, having worked in both development and IT roles for organizations such as Silicon Graphics International, Société Générale, and the University of Miami.  Mr. Guo earned his bachelor's degree in Computer Engineering from Purdue University, and his law degree, with honors, from the University of Miami School of Law.