Key Victory for VirnetX at Federal Circuit in Long-Running Battle with Apple

The Federal Circuit on October 8 issued a formal mandate in VirnetX, Inc. v. Cisco Systems and Apple, Inc., making its January 15, 2019 Rule 36 judgment against Apple final. The mandate comes after the Court’s denial on October 1 of Apple’s motions to stay and vacate the August 1 decisions affirming-in-part, vacating-in-part, and remanding a decision of the Patent Trial and Appeal Board (PTAB), and separately denying Apple’s August 1 request for rehearing and rehearing en banc in its appeal from the U.S. District Court for the Eastern District of Texas ruling awarding VirnetX nearly $440 million.

Following the August 1 rulings and Apple’s subsequent bid for rehearing, VirnetX filed a reply to Apple’s motions, arguing that the tech giant was merely trying to delay the case in order to give priority to continuing PTAB hearings. The two companies have been fighting for nine years.

VirnetX’s brief in opposition to Apple’s latest bid for another chance called the motions’ implication that Article III courts should give priority to PTAB validity determinations a “false notion” that the Federal Circuit had already dismissed in a previous ruling. It further noted that this was Apple’s eighth request to stay the proceedings on the basis that courts should give priority to PTAB validity determinations over Article III courts. “[Apple] seeks indefinite delay to give PTO validity determinations absolute priority over Article III court validity determinations—no matter how far off those PTO decisions and no matter how long the odds Apple will prevail in those decisions,” the brief said.

Apple countered that VirnetX’s opposition brief focused chiefly on procedural, rather than substantive, arguments; that VirnetX’s contention that Apple’s rehearing request was based on arguments that have already been made was incorrect; and that granting its requests was a matter of “basic due process” rather than indefinite delay, as VirnetX contended.

Collateral Estoppel Issue Still Open

But the Federal Circuit was not convinced and issued its two October 1 orders denying Apple’s motions and rehearing request, though the Court noted that that its denial of rehearing left open the issue of collateral estoppel to be considered on remand. Apple had argued that collateral estoppel barred VirnetX from arguing for the patentability of claims 5, 12, and 13 of U.S. Patent No. 7,418,504 B2.

In a statement, Kendall Larsen, VirnetX CEO and President, said the company is “very pleased with the Federal Circuit’s decision to issue the formal mandate.” He added: “This decision yet again confirms the value of our Intellectual Property.”

IPWatchdog reached out to counsel for Apple for comment, but had not received a response as of the time of publication.

Read more about this nine-year battle at the links below:

March 21, 2019:

Apple is Afraid of Inventors, Not Patent Trolls

February 5, 2019:

Federal Circuit Rule 36 Judgment in VirnetX v. Cisco and Apple: A Look at the Oral Arguments

January 6, 2019:

Federal Circuit Affirms Apple IPR Victory over VirnetX Patent

October 2, 2018:

Apple to pay VirnetX $93.4 million in costs and interest for patent infringement

April 12, 2018:

VirnetX Awarded $502.6 Million in Fourth Jury Trial against Apple

November 25, 2017:

Three rounds of IPR petitions invalidates VirnetX patent after Apple gets around statute of limitations

October 21, 2017:

VirnetX wins nearly $440 million verdict against Apple, including willful infringement damages

June 25, 2017:

The PTAB Killing Fields: VirnetX patents worth more than $1 billion in district court lost at PTAB