Pre-AIA Litigation Triggers Time Bar For Inter Partes Review

Apple Inc. v. VirnetX, Inc. and Science Applications International Corporation

In response to a petitioner's request for rehearing of a decision denying institution of an inter partes review (IPR) proceeding, the U.S. Patent and Trademark Office's Patent Trial and Appeal Board (Board) reiterated that any litigation asserting the patent at issue, including pre-America Invents Act (pre-AIA) litigation, operates to trigger the time bar under 35 U.S.C. § 315(b).  Apple Inc. v. VirnetX, Inc. and Science Applications International Corporation, Case IPR2013-00348 (PTAB, Feb. 12, 2014).

Petitioner Apple requested an IPR on three grounds of review. In its preliminary response, VirnetX argued that Apple was served with a "complaint" under the ambit of § 315(b) by way of a litigation initiated by VirnetX in August of 2010, and thus Apple was barred from seeking IPR in June of 2013.