Apple's Inter Partes Petition Not Time-barred under Section 315(b): PTAB | Practical Law

Apple's Inter Partes Petition Not Time-barred under Section 315(b): PTAB | Practical Law

In Apple Inc. v. Achates Reference Publishing, Inc., the Patent Trial and Appeal Board (PTAB) determined that Apple was not in privity with co-defendant QuickOffice, Inc. in a related matter, making Apple's inter partes petition not time-barred under 35 U.S.C. § 315(b).

Apple's Inter Partes Petition Not Time-barred under Section 315(b): PTAB

Practical Law Legal Update 8-570-2685 (Approx. 3 pages)

Apple's Inter Partes Petition Not Time-barred under Section 315(b): PTAB

by Practical Law Intellectual Property & Technology
Published on 04 Jun 2014 • USA (National/Federal)
In Apple Inc. v. Achates Reference Publishing, Inc., the Patent Trial and Appeal Board (PTAB) determined that Apple was not in privity with co-defendant QuickOffice, Inc. in a related matter, making Apple's inter partes petition not time-barred under 35 U.S.C. § 315(b).
On June 2, 2014, in Apple Inc. v. Achates Reference Publishing, Inc., the Patent Trial and Appeal Board (PTAB) determined the challenged patent claims in two separate inter partes reviews were unpatentable (Case IPR2013-00080 (PTAB June 2, 2014) and Case IPR2013-00081 (PTAB June 2, 2014)).
Apple Inc. filed petitions for inter partes review of two of Achates Reference Publishing, Inc.'s (Achates) patents relating to distributing and installing computer programs and data. In its Patent Owner Responses, Achates argued Apple's petitions were time-barred under 35 U.S.C § 315(b) because:
  • Apple filed the inter partes review petitions on December 14, 2012.
  • QuickOffice, Inc., a co-defendant with Apple in Achates Reference Publishing, Inc. v. Symantec Corp. in the US District Court for the Eastern District of Texas, was served with a complaint in that suit on June 20, 2011 (Case No. 2:11-cv-00294-JRG-RSP).
  • An inter partes review petition may not be filed more than one 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 PTAB considered whether Apple was in privity with QuickOffice by looking to the US Supreme Court's decision in Taylor v. Sturgell for guidance (553 US 880 (2008)). Taylor advises that a person not party to a lawsuit is not bound by a judgment in that suit unless there is a pre-existing substantive legal relationship between a party and the person to be bound by the judgment. Achates argued that QuickOffice was in privity with Apple and had a pre-existing substantive legal relationship with Apple by virtue of a software development kit (SDK) agreement which includes an indemnity clause requiring QuickOffice to indemnify Apple for any third party patent infringement claims.
In rejecting Achates' claims, the PTAB determined that:
  • Achates provided no evidence that QuickOffice was involved in filing or funding either of the above petitions or that QuickOffice had or could have exercised control over Apple's participation in the proceedings.
  • The SDK agreement did not give QuickOffice the right to intervene or control Apple's defense to any charge of patent infringement, and more importantly, indemnification is not one of the substantive legal relationships contemplated in Taylor.
  • Achates did not treat the related litigations as if Apple were in privity with QuickOffice. In particular, Achates continued to assert the patents in question against Apple even after settling with QuickOffice and other co-defendants. Accordingly, there is nothing to suggest that Apple would be estopped by any judgment against its co-defendants, further supporting the view that the relationship between Apple and QuickOffice is not one of privity.