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VIRNETX INC.,
Appellant,
v.
Appeals from the United States Patent and Trademark Office, Patent Trial and
Appeal Board in Nos. 95/001,788, 95/001,789, and 95/001,856.
CERTIFICATE OF INTEREST
Apple Inc.
Not applicable.
3. All parent corporations and any publicly held companies that own 10
percent or more of the stock of the party or amicus curiae represented by me are:
None.
4. The names of all law firms and the partners or associates that
appeared for the party or amicus now represented by me in the trial court or agency
or are expected to appear in this court (and who have not or will not enter an
appearance in this case) are:
• VirnetX Inc. v. Cisco Systems, Inc., No. 18-1197 (Fed. Cir.) (Apple’s
appeal from district court judgment awarding damages in related case
involving U.S. Patent Nos. 6,502,135 (“the ’135 patent”), 7,490,151 (“the
’151 patent), 7,418,504 (“the ’504 patent”), and 7,921,211 (“the ’211
patent”)
• VirnetX Inc. v. Iancu, Nos. 17-2593, -2594 (Fed. Cir.) (VirnetX’s appeals
from IPRs holding unpatentable claims of ’504 and ’211 patents) (stayed
pending resolution of Appeal Nos. 17-1591, -1592, -1593)
• VirnetX Inc. v. Cisco Systems, Inc., No. 18-1751 (Fed. Cir.) (VirnetX’s
appeal from Cisco reexamination holding unpatentable claims of ’504
patent)
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• VirnetX Inc. v. Apple Inc., No. 19-1050 (Fed. Cir.) (Apple’s appeal from
district court judgment awarding damages in related case involving ’135,
’151, ’504, and ’211 patents)
• VirnetX Inc. v. Cisco Systems, Inc., No. 19-1671 (Fed. Cir.) (VirnetX’s
appeal from Cisco reexamination holding unpatentable claims of ’135
patent)
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TABLE OF CONTENTS
Page
CERTIFICATE OF INTEREST .................................................................................i
BACKGROUND .......................................................................................................4
ARGUMENT .............................................................................................................9
CONCLUSION ........................................................................................................17
ADDENDUM
CERTIFICATE OF SERVICE
CERTIFICATE OF COMPLIANCE
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TABLE OF AUTHORITIES
CASES
Page(s)
Abbott v. Veasey,
137 S. Ct. 612 (2017) ..........................................................................................16
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DOCKETED CASES
U.S. Const.
Art. III § 1 ...........................................................................................................12
Art. III § 2 ...........................................................................................................12
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LEGISLATIVE MATERIALS
OTHER AUTHORITIES
MPEP
§ 2686.04.............................................................................................................11
§ 2686.04.IV .......................................................................................................13
§ 2686.04.V.A .....................................................................................................13
Shapiro, Stephen M., Supreme Court Practice (10th ed. 2013) ..............................16
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STATEMENT OF COUNSEL
to the following decisions of the Supreme Court and this Court: Mercer v. Theriot,
377 U.S. 152 (1964) (per curiam); Hamilton-Brown Shoe Co. v. Wolf Brothers &
Co., 240 U.S. 251 (1916); Fairchild (Taiwan) Corp. v. Power Integrations, Inc.,
854 F.3d 1364 (Fed. Cir. 2017); Bettcher Industries, Inc. v. Bunzl USA, Inc., 661
F.3d 629 (Fed. Cir. 2011); Fresenius, USA, Inc. v. Baxter International, Inc., 721
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INTRODUCTION
Court’s authority to take appeals involving U.S. patents under Article III of the
U.S. Constitution.” Dissent 1. The panel divided 2-1 regarding the interpretation
of an estoppel statute governing the interplay between patent litigation and Patent
this Court, overturns a settled Patent Office interpretation of its own authority, and
undermines the Supreme Court’s ability to exercise its own certiorari jurisdiction.
The Court should grant this petition, restore the correct interpretation of 35 U.S.C.
affirm the Patent Trial and Appeal Board’s (“the Board’s”) decision holding the
maintained “[o]nce a final decision has been entered against a party in a civil
action … that the party has not sustained its burden of proving … invalidity.” 35
U.S.C. § 317(b) (2006).1 As this Court has previously recognized, § 317(b) does
not apply until “all appeals” in the parallel litigation have ended. Fairchild, 854
F.3d at 1365; Bettcher, 661 F.3d at 646. It is undisputed that Apple still may file a
petition for certiorari in the district court litigation asking the Supreme Court to
1
Emphases are added unless indicated otherwise.
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review this Court’s earlier affirmance of the district court’s no-invalidity ruling.
may one day reconsider the invalidity issue’ decided” in the district court litigation,
“finality is lacking with respect to the invalidity issue in this case.” Dissent 10
The panel majority believed itself bound by Fairchild to rule the other way.
at odds with this [C]ourt’s decision[] in Bettcher” (Dissent 7)—is reason enough to
in this area, the majority’s opinion contradicts the statute’s text: a decision is not
“final” under § 317(b) if further review by the Supreme Court remains available.
Indeed, the PTO—the agency charged with interpreting the statute—adopted that
common-sense interpretation.
authority to consider not only those issues “‘before the court of appeals upon the
second appeal,’” but also the “questions raised on the first appeal.” Mercer, 377
U.S. at 153-154 (quoting Hamilton-Brown Shoe, 240 U.S. at 257). Yet by wiping
out an agency reexamination proceeding simply because this Court—but not the
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determine its docket by requiring patent challengers to file premature petitions for
certiorari that the Supreme Court itself disfavors (Dissent 10-11), and risks
undermining the Supreme Court’s constitutional role as the ultimate voice of the
federal judiciary. Nothing in the statute suggests that Congress meant to do that.
BACKGROUND
A. VirnetX sued Apple for infringement of the ’135 and ’151 patents in
2010 and added the related ’504 and ’211 patents in 2011. VirnetX Inc. v. Cisco
Sys., Inc., 767 F.3d 1308, 1315 (Fed. Cir. 2014). The ’504 and ’211 patents
between a first computer and a second computer over a computer network, such as
Apple’s FaceTime servers infringed the ’504 and ’211 patents. VirnetX, 767 F.3d
at 1314.
In 2012, a jury found the asserted claims infringed and not invalid and
awarded $368 million in damages. VirnetX, 767 F.3d at 1313. Apple appealed,
and in 2014, this Court vacated the infringement judgment for the ’504 and ’211
patents, affirmed the no-invalidity judgment, and vacated the damages award. Id.
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that time, and the case returned to the district court for further proceedings.
’504 patent and claims 36, 47, and 51 of the ’211 patent and awarded $302 million.
VirnetX Inc. v. Apple Inc., No. 6:10-cv-417, ECF No. 1025 (E.D. Tex. Sept. 30,
2016). Apple appealed, and a panel of this Court summarily affirmed under this
Court’s Rule 36. VirnetX Inc. v. Cisco Sys., Inc., 748 F. App’x 332 (Fed. Cir.
2019) (mem.). Apple’s first petition for rehearing was denied, but its motions to
stay the mandate and for leave to file a second rehearing petition and/or
necessary, Apple intends to file a petition for certiorari seeking review of this
B. Shortly after VirnetX amended its complaint to include the ’504 and
part to VirnetX’s sustained and successful efforts to delay them. See Apple Br. 16
& n.8. In the end, the Examiner found all claims of the ’504 and ’211 patents
After this Court rendered its interlocutory decision in the district court
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on infringement and damages, see supra pp. 4-5—VirnetX asked the PTO to
because “the district court’s decision on invalidity in the present case is not final.”
F.3d 629, the PTO explained that a “court’s decision is final” only “after all
Federal Circuit has remanded the case to the district court with instructions to hold
a new trial on infringement and damages,” “[a]ny judgment by the district court in
the remand proceeding may be appealed to the Federal Circuit (i.e., a second
appeal).” Appx1662; Appx3143. And the Supreme Court may “‘consider all of
the substantial federal questions determined in the earlier stages of the litigation,’”
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concluded, “the district court’s decision on invalidity in the present case is not
proceeding), may review the invalidity issue raised on the first appeal.”
Appx1662-1663; Appx3143-3144.
The panel unanimously affirmed the Board’s decision that claims 36-60 of the ’504
patent and claims 1-35 and 60 of the ’211 patent are unpatentable. However, the
regarding claims 1-35 of the ’504 patent and claims 36-59 of the ’211 patent. Op.
23-24. A panel majority, while recognizing that Apple could still petition for
certiorari regarding invalidity (Op. 9), nonetheless read this Court’s prior decision
in Fairchild and § 317(b)’s text as compelling the conclusion that the PTO could
“final decision” occurs when “the invalidity challenge is decided on appeal and the
time for petitioning for certiorari has passed—regardless of the fact review of the
entire case could occur at some point in the future[.]” Op. 17-18 (emphasis in
original).
Judge Reyna, who wrote the Fairchild opinion, dissented. He explained that
§ 317(b) does not apply here because “Apple’s time for petitioning for certiorari on
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the issue of invalidity” has not passed. Dissent 3. Judge Reyna disagreed with the
panel majority’s reading of Fairchild, which held that § 317(b) applies only “when
‘all appeals have terminated,’” and did not hold “that a party is immediately
obligated to petition for certiorari once this court resolves an issue of invalidity
where other issues involving the same patent remain undecided[.]” Id. As Judge
with this [C]ourt’s decisions in Bettcher … and Fresenius[.]” Dissent 7. And even
under the majority’s “reading of the statute, finality is lacking with respect to the
when to seek certiorari “was both reasonable and consistent with the law and
principles of judicial economy” “because Apple can now appeal the issues of
majority’s decision requiring Apple to have sought earlier Supreme Court review
Finally, Judge Reyna explained that “by determining that this [C]ourt’s affirmance
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ARGUMENT
proceedings “[o]nce a final decision has been entered against a party in a civil
action” holding “that the party has not sustained its burden of proving …
hold that a decision is not “final” under § 317(b) until “all appeals have
terminated.” Bettcher, 661 F.3d at 646; see Fairchild, 854 F.3d at 1365. In this
case, there has been no “final decision” rejecting Apple’s challenge to the ’504 and
’211 patents’ validity in the district court litigation, because—as the panel majority
and VirnetX both acknowledge—Apple may still seek Supreme Court review of
the no-invalidity decision by filing a timely petition for certiorari from this Court’s
ultimate judgment. See Dissent 6-7 (explaining that § 317(b) is not triggered
because “Apple can now appeal the issues of infringement and invalidity together”
The panel majority incorrectly believed that circuit precedent compelled its
conclusion. On the contrary, circuit precedent compelled the opposite result, and
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from a no-invalidity decision of this Court expires, even when this Court’s decision
is interlocutory and allows a party to petition for certiorari regarding the no-
invalidity decision after the remand is complete. See Op. 10; see also Dissent 3
(majority incorrectly read Fairchild “to mean that the appellate process terminates
once this [C]ourt issues a decision on any issue and an appeal is not immediately
taken”).
interpretation of § 317(b). Op. 12. But neither party in Fairchild even raised the
possibility that the Supreme Court could consider the relevant invalidity issue on
certiorari from a subsequent decision of this Court. Dissent 4 n.2; see Fairchild,
No. 2017-1002, ECF Nos. 26, 28, and 29. On the contrary, the Fairchild parties
affirmatively represented in a letter dated March 17, 2017 that “the time to petition
for certiorari” had expired four days earlier. Fairchild, No. 2017-1002, ECF No.
representation, stating that § 317(b) applied because “the time to petition for a writ
of certiorari ha[d] passed.” 854 F.3d at 1366. Here, by contrast, Apple has
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consistently argued—and neither VirnetX nor the panel majority denied—that its
time to petition for certiorari has not “passed.” Accordingly, Fairchild cannot
statute. See United States v. County of Cook, Ill., 170 F.3d 1084, 1088 (Fed. Cir.
1999) (“James did not decide or even discuss the present issue, presumably
The panel majority’s attempt to distinguish Bettcher also fails. The majority
relied on the fact that Bettcher primarily involved estoppel under a different
possibility of Supreme Court review. Op. 18-19. But as Judge Reyna rightly
explained in dissent, Bettcher construed § 317(b) as part of its analysis about the
scope of § 315(c). Dissent 8 n.4. Indeed, the Fairchild opinion itself treated
1365 (“We have held that this restriction applies when ‘all appeals have
terminated.’” (quoting Bettcher, 661 F.3d at 646)). And while Bettcher did not
when § 317(b) applies—that is, “only when … all appeals have terminated.” 661
estoppel as not applying when “there remains any time for an appeal … from a …
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Bettcher suggests that its holding was limited solely to appeals to the [PTO] and
this Court” (Dissent 8 n.4), and Bettcher could not reasonably have made such a
questions like patent invalidity. See U.S. Const. Art. III § 1 (“The judicial power
enough to grant rehearing. But further reason is that the panel majority’s ruling
cannot be squared with the proper interpretation of § 317(b). Under the statute,
estoppel does not apply until there is a “final decision” on invalidity. This Court’s
rulings are not “final decision[s]” under § 317(b) until all opportunities for
Supreme Court review have passed. As this Court explained in a prior precedential
2
To the extent the panel majority suggested that “Supreme Court review does
not qualify as an ‘appeal’ for purposes of § 317(b)’s estoppel provision” (Dissent
10 (citing Op. 19 n.10)), such a suggestion is inconsistent with Article III of the
U.S. Constitution. Dissent 10 (“[T]he Supreme Court ‘shall have appellate
Jurisdiction, both as to Law and Fact.’” (quoting U.S. Const. Art. III § 2)). It also
is inconsistent with statutes providing parties with the right to petition for
certiorari. See 28 U.S.C. § 1254; id. § 2101(c); see also Durham v. United States,
401 U.S. 481, 483 n.* (1971) (explaining that although “appeals are a matter of
right while decisions on certiorari petitions are wholly discretionary[,] Congress …
has given a right to petition for certiorari”), overruled on other grounds by Dove v.
United States, 423 U.S. 325 (1976); Dissent 10-11 (noting that “Apple has a right
to petition for a writ of certiorari” (emphasis in original)).
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“confirm[s] that § 317(b) applies ‘after any appeals.’” Bettcher, 661 F.3d at 646
(quoting 145 Cong. Rec. 29,276, 29,973 (1999)). The PTO also interpreted
§ 317(b) in the same manner. See id.; MPEP § 2686.04.V.A (a “decision is not
final” “[i]f there remains any time for an appeal … from a … Federal Circuit[]
after all appeals, the parties are required to notify the Office of the final court
the statute must prevail unless the majority’s contrary interpretation is plainly
correct. Cooper Techs. Co. v. Dudas, 536 F.3d 1330, 1336 (Fed. Cir. 2008); see
Chevron, U.S.A., Inc. v. Natural Resources Defense Council, Inc., 467 U.S. 837,
842-843 (1984).
flawed. First, the majority stated that the “statute only requires ‘a final decision’
on a precise issue—whether the party has ‘sustained its burden of proving the
invalidity of any patent claim in suit.’” Op. 16. That is true but irrelevant.
Because—as the majority itself acknowledged—“the Supreme Court may one day
reconsider the invalidity issue” (Op. 17), there has not been a “final decision” on
invalidity. See Dissent 10 (“[E]ven under the majority’s reading of the statute,
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requiring all appellate deadlines to elapse would mean that “estoppel will rarely
apply.” Op. 15-17, 21. That is incorrect. As Judge Reyna pointed out, “not every
appeal that reaches this [C]ourt results in a remand, and even if that were the case,
estoppel would still apply once all appeals are terminated.” Dissent 12. And, in
accordingly. King v. Burwell, 135 S. Ct. 2480, 2489 (2015) (“If the statutory
Third, the panel majority disregarded the PTO’s interpretation of the statute
because, in its view, the text was clear the other way. That, too, is incorrect. The
contemplates completion of Supreme Court review, or just the first opportunity for
was at least reasonable for the PTO to conclude that a “final decision” requires
after all issues in the case have been resolved by the lower courts. Indeed, this
Court is not “final” if this Court remands on other issues. See Fresenius, 721 F.3d
at 1341 (holding that this Court’s “remand decision” in a first district court appeal
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“was not sufficiently final to prevent the application” of the PTO’s cancellation of
claims); see also Mendenhall v. Barber-Greene Co., 26 F.3d 1573, 1581 (Fed. Cir.
final than the appealed decision itself.”). Thus, the statute is at most “ambiguous
with respect to the specific issue,” and “the agency’s answer is based on a
permissible construction of the statute.” Chevron, 467 U.S. at 843. Indeed, given
that review following resolution of all issues is the Supreme Court’s preferred
method of review, see infra pp. 15-17, the PTO’s conclusion is not only a
something the Supreme Court has specifically stated they should not do, namely
file interlocutory petitions for certiorari before all issues have been finally resolved
in the lower courts. The Supreme Court has a strong preference for litigants to
wait to seek review until the lower courts have determined all issues in the case,
cases.” Hamilton-Brown Shoe, 240 U.S. at 258. That a petition for certiorari seeks
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alone, to deny it. See id.; see also Brotherhood of Locomotive Firemen &
Enginemen v. Bangor & Aroostook R.R. Co., 389 U.S. 327, 328 (1967) (per
curiam) (“[B]ecause the Court of Appeals remanded the case, it is not yet ripe for
review by this Court.”); Shapiro, Supreme Court Practice 282-283 (10th ed. 2013)
a case that has been the subject of multiple appeals, the Supreme Court may
consider not only those issues “‘that were before the court of appeals upon the
second appeal,’” but also the “questions raised on the first appeal.” Mercer, 377
which the patentee would oppose as premature and which would likely be denied
on that basis. And it would treat that certiorari denial as foreclosing further
reexamination proceedings in the PTO, even though the Supreme Court could later
3
E.g., Abbott v. Veasey, 137 S. Ct. 612, 613 (2017) (Roberts, C.J., respecting
denial of certiorari); Mount Soledad Mem’l Ass’n v. Trunk, 567 U.S. 944, 945-946
(2012) (Alito, J., respecting denial of certiorari); Virginia Military Inst. v. United
States, 508 U.S. 946 (1993) (Scalia, J., respecting denial of certiorari).
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certiorari to this Court’s ultimate judgment deciding all issues. Not only does the
the party challenging validity simply because the Supreme Court generally prefers
to review all of a case’s issues (including any no-invalidity ruling) together, rather
than piecemeal. Nothing in the statute suggests that Congress intended such an
CONCLUSION
Respectfully submitted,
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ADDENDUM
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VIRNETX INC.,
Appellant
v.
DISCUSSION
I
VirnetX’s appeal proceeds in two parts. First, VirnetX
argues as a threshold matter that Apple was estopped from
maintaining its reexams under the pre-AIA version of
35 U.S.C. § 317(b) (2006). Second, VirnetX challenges the
merits of the Board’s conclusions in both the Apple and
Cisco reexams that the ’504 and ’211 patents are invalid.
We address each in turn.
II
VirnetX contends that Apple’s reexams were barred by
§ 317(b). The PTO refused to terminate Apple’s reexams
based on the conclusion that the provision did not apply.
In VirnetX’s view, the PTO’s decision was inconsistent with
controlling case law, the statutory text, and Congress’s in-
tent. We agree.
The applicability of § 317(b) is a question of statutory
interpretation. See Bettcher Indus., Inc. v. Bunzl USA,
Inc., 661 F.3d 629, 639, 642–48 (Fed. Cir. 2011). Statutory
interpretation is an issue of law we review de novo. Un-
wired Planet, LLC v. Google Inc., 841 F.3d 1376, 1379 (Fed.
Cir. 2016).
The Patent Act requires that the PTO terminate a reex-
amination once there has been a final decision on the pa-
tent challenger’s invalidity case in federal court. 35 U.S.C.
§ 317(b) (2006). Specifically, pre-AIA § 317(b) provides:
Once a final decision has been entered against a
party in a civil action arising in whole or in part
under section 1338 of title 28, that the party has not
sustained its burden of proving the invalidity of any
patent claim in suit . . . then neither that party nor
its privies may thereafter request an inter partes
reexamination of any such patent claim on the ba-
sis of issues which that party or its privies raised
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VIRNETX INC.,
Appellant
v.
I.
This dispute has reached this court once before. In
2010, VirnetX Inc. (“VirnetX”) sued Apple Inc. (“Apple”) in
district court, alleging infringement of four patents, includ-
ing the two at issue in this appeal, U.S. Patent Nos.
7,418,504 (“the ’504 patent”) and 7,921,211 (“the ’211 pa-
tent”). Apple defended on grounds that the patents were
invalid. After trial, the jury entered verdicts against Apple
that the patents were infringed and not invalid. Apple ap-
pealed. We affirmed the jury’s finding of no invalidity. Vir-
netX, Inc. v. Cisco Sys., Inc., 767 F.3d 1308, 1323–24 (Fed.
Cir. 2014) (“VirnetX I”). We reversed the district court’s
decision on claim construction, vacated the jury’s infringe-
ment finding and damages award, and remanded for a new
trial on those issues. Id. at 1317–19, 1323–34. At that
time, Apple did not petition for a writ of certiorari on the
issue of invalidity.
During the initial district court litigation, Apple filed
requests for inter partes reexamination of the ’504 and ’211
patents. After several years of reexamination proceedings,
the Examiner found all claims of the ’504 and ’211 patents
invalid, and the Patent Trial and Appeal Board (“Board”)
affirmed. VirnetX now appeals from the Board’s final writ-
ten decisions 1 on the basis that reexamination of the ’504
and the ’211 patents was barred under § 317(b).
Section 317(b) provides in relevant part:
Once a final decision has been entered against a
party in a civil action arising in whole or in part
under section 1338 of title 28, that the party has
CERTIFICATE OF SERVICE
I hereby certify that, on this 26th day of August, 2019, I filed the foregoing
Combined Petition of Appellee Apple Inc. for Panel Rehearing and Rehearing En
Banc with the Clerk of the United States Court of Appeals for the Federal Circuit
via the CM/ECF system, which will send notice of such filing to all registered
CM/ECF users.
CERTIFICATE OF COMPLIANCE
Pursuant to Fed. R. App. P. 32(g), the undersigned hereby certifies that this
using Microsoft Word 2010 in 14 point Times New Roman font. As permitted by
Fed. R. App. P. 32(g), the undersigned has relied upon the word count feature of