VirnetX’s U.S. Patent No. 6,502,135 is the crown jewel of its portfolio of network patents that it has used to obtain a $200 million settlement with Microsoft and a $368.2 million verdict against Apple. Apple has now filed two inter partes review requests challenging the validity of the ‘135 patent (see inter partes review Request No. (9)). The challenge, however, raise an estoppel issue, addressed by Apple in its petitions.
Specifically, Apple acknowledges that it was served with a complaint, which led to Case No. 6:10-cv-00417, in August 2010, that is, more than one year prior to the filing of the instant petition. However, Apple argues that the August 2010 complaint does not foreclose the instant petition under 35 U.S.C. §315(b), because Apple was served with a new complaint in December of 2012, which matured into Case No. 6:13-cv-00211-LED. Section 315(b) reads, “[a]n 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” (emphasis added). Emphasizing the plain wording of §315(b), Apple insists that as long as a petition for inter partes review is filed within one year of the date any complaint alleging infringement of the patent is served on the petitioner, the petition is timely.
Scott Daniels | June 16, 2013
Last week in a Decision in Idle Free Systems v. Bergstrom, IPR 2012-00027, the APJs continued their effort to instruct practitioners on acceptable procedures in inter partes review proceedings, in this case the proper steps for amending claims. The specific outcome of the Decision – in essence to allow the patentee a second chance to amend its claims – is of little general interest. What is of interest is the APJ’s statement of their expectations of patent owners in future cases.
Scott Daniels | June 11, 2013
Last week in U.S. Bancorp v. Retirement Capital Access Management, CBM2013-00014, the petitioner asked the APJs to add two additional companies to the review as petitioners and real parties-in-interest. The two companies were defendants accused in a District Court action of infringing the patent under review, but they had not themselves requested post-grant review. The APJs denied the petitioner’s request for joinder.
The APJs began their analysis by citing the statutory basis for joinder:
If more than 1 petition . . . is properly filed against the same patent and the Director determines that more than 1 of these petitions warrants the institution of a . . . review . . . the Director may consolidate such reviews into a single . . . review.
JDS Uniphase requested inter partes review of two Fiber, LLC. optical switching apparatus patents (see inter partes review Request Nos. (1) & (11)). Fiber has sued Ciena and NEC for infringement of the patents. The latter two companies are presumably JDS customers.
IBS requested inter partes review of Illumina Cambridge’s U.S. Patent No. 7,057,026, that claims labeled nucleotides (see inter partes review Request No. (3)). IBS had previously filed a petition requesting inter partes review of the ‘026 patent (IPR2013-00128). The previous petition relied on a different primary reference than last week’s petition.
The number of inter partes review requests continues to rise, with 13 new requests being filed last week.Next Page »