On June 2, 2014, a panel of Administrative Patent Judges of the Patent Trial and Appeals Board (the "Board") issued a final written decision, and rejected the patent owner's argument that the petitioner was time-barred under 35 U.S.C. § 315(b) based on privity. Specifically, the patent owner argued that one of the petitioner's co-defendants in a case pending in the United States District Court for the Eastern District of Texas was served with a complaint alleging infringement of the patent more than one year before the petitioner filed the petition, and that the co-defendant and the petitioner were in privity because the co-defendant may have agreed to indemnify the petitioner for infringement claims involving the accused instrumentality. Noting that “whether a non-party is a ‘privy’ for purposes of an inter partes review is a ‘highly fact-dependent question,’” the Board found that the patent owner provided no evidence that the co-defendant had any role in the filing or funding of the Petition. The Board also found that there was no evidence the co-defendant exercised, or could have exercised, control over the petitioner's participation in the proceeding. The patent owner's sole evidence that a privity relationship existed was indemnification language in a Software Development Kit (SDK) agreement that the petitioner allegedly enters into with iPhone developers. Even assuming that the specific indemnification provision of the SDK agreement applied to the petitioner's co-defendant (and the Board found that the patent owner had not shown that it applied), the Board was not persuaded that the provision was indicative of the co-defendant being a privy of the petitioner. In its final written decision, the Board found that 15 claims of the challenged patent were unpatentable under 35 U.S.C. §102 and 35 U.S.C. §103. 

Apple Inc. v. Achates Reference Publishing, Inc., IPR2013-00080 (PTAB June 2, 2014) [Arbes (opinion); Anderson; Blankenship]