Virnetx Inc. v. Apple Inc. , 931 F.3d 1363 ( 2019 )

United States Court of Appeals
for the Federal Circuit
______________________
VIRNETX INC.,
Appellant
v.
APPLE INC., CISCO SYSTEMS, INC.,
Appellees
______________________
2017-1591, 2017-1592, 2017-1593
______________________
Appeals from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in Nos. 95/001,788,
95/001,789, 95/001,856.
______________________
Decided: August 1, 2019
______________________
STEPHEN BLAKE KINNAIRD, Paul Hastings LLP, Wash-
ington, DC, argued for appellant. Also represented by
NAVEEN MODI, JOSEPH PALYS, IGOR VICTOR TIMOFEYEV,
MICHAEL WOLFE, DANIEL ZEILBERGER.
WILLIAM F. LEE, Wilmer Cutler Pickering Hale and
Dorr LLP, Boston, MA, argued for appellee Apple Inc. Also
represented by REBECCA A. BACT, MARK CHRISTOPHER
FLEMING, LAUREN B. FLETCHER, DOMINIC E. MASSA;
BRITTANY BLUEITT AMADI, Washington, DC; SCOTT
BORDER, JEFFREY PAUL KUSHAN, Sidley Austin LLP, Wash-
ington, DC.
2 VIRNETX INC. v. APPLE INC.
THEODORE M. FOSTER, Haynes & Boone, LLP, Dallas,
TX, argued for appellee Cisco Systems, Inc. Also repre-
sented by DAVID L. MCCOMBS, ANDREW S. EHMKE, DEBRA
JANECE MCCOMAS.
______________________
Before PROST, Chief Judge, MOORE and REYNA,
Circuit Judges.
Opinion for the court filed by Chief Judge PROST.
Opinion concurring in part and dissenting in part filed by
Circuit Judge REYNA.
PROST, Chief Judge.
Appellant VirnetX Inc. (“VirnetX”) appeals from deci-
sions of the Patent Trial and Appeal Board (“Board”) re-
lated to three inter partes reexaminations maintained by
Apple Inc. (“Apple”) and Cisco Systems, Inc. (“Cisco”). The
United States Patent and Trademark Office (“PTO”) con-
cluded that Apple was not barred from maintaining its
reexams by the estoppel provision of the pre-America In-
vents Act (“AIA”) version of 35 U.S.C. § 317(b) (2006). The
Board affirmed the Examiner’s determination that the
claims of U.S. Patent Nos. 7,418,504 (“the ’504 patent”) and
7,921,211 (“the ’211 patent”) are unpatentable as antici-
pated or obvious over the prior art of record. For the rea-
sons below, we affirm-in-part, vacate-in-part, and remand.
BACKGROUND
I
The ’504 and ’211 patents describe systems and meth-
ods for “establishing a secure communication link between
a first computer and a second computer over a computer
network, such as the Internet.” ’211 patent col. 6 ll. 36–39.
These systems and methods are “built on top of the existing
Internet protocol (IP).” Id. at col. 6 ll. 17–20.
VIRNETX INC. v. APPLE INC. 3
The Internet uses addressing systems for sending data.
In such systems, physical computers can be identified by a
unique IP address (e.g., 123.345.6.7). VirnetX Inc. v. Apple
Inc., 665 F. App’x 880, 882 (Fed. Cir. 2016).
Each IP address corresponds to a domain name (e.g.,
www.Yahoo.com). See ’211 patent col. 38 ll. 58–61, col. 39
ll. 13–14. A user on one computer can enter a domain name
in a web browser to communicate with another computer
or server. When the user does so, the computer sends a
domain name service (“DNS”) request to the domain name
server for the IP address corresponding to a given domain
name. Id. at col. 38 l. 58–col. 39 l. 3. The domain name
server then looks up the IP address of the requested do-
main name and returns it to the requesting computer. Id.
at col. 39 ll. 3–7.
Both VirnetX patents claim systems, methods, and me-
dia for creating secure communication links via DNS sys-
tems. For example, claim 1 of the ’211 patent recites:
1. A system for providing a domain name service
for establishing a secure communication link, the
system comprising:
a domain name service system configured and ar-
ranged to
[1] be connected to a communication network,
[2] store a plurality of domain names and corre-
sponding network addresses,
[3] receive a query for a network address, and
[4] indicate in response to the query whether the
domain name service system supports establishing
a secure communication link.
4 VIRNETX INC. v. APPLE INC.
Independent claims 36 and 60 of the ’211 patent are
directed to a “machine-readable medium” and a “method,”
respectively. Otherwise, they mirror the requirements of
claim 1. Independent claims 1, 36, and 60 of the ’504 pa-
tent are similar to the corresponding independent claims of
the ’211 patent.
II
In 2010, VirnetX sued Apple in district court. VirnetX
alleged infringement of four patents, including the ’504 and
’211 patents. 1 VirnetX asserted claims 1, 2, 5, 16, 21, and
27 of the ’504 patent and claims 36, 37, 47, and 51 of the
’211 patent. VirnetX Inc. v. Apple Inc., 925 F. Supp. 2d 816,
824–25 (E.D. Tex. 2013).
In October 2011, Apple filed requests for inter partes
reexamination of the ’504 and ’211 patents with the PTO.
In Apple’s Reexam Nos. 95/001,788 (“788 case”) and
95/001,789 (“789 case”) (collectively, “Apple reexams”), Ap-
ple challenged all claims as anticipated by the Provino ref-
erence or rendered obvious by Provino in view of other prior
art. 2
The district court action proceeded to trial in late 2012.
A jury found the asserted claims infringed and not invalid.
The jury awarded VirnetX $368 million in damages. Vir-
netX, 925 F. Supp. 2d at 825. The district court denied Ap-
ple’s motion for judgment as a matter of law (“JMOL”) or a
new trial on these issues. Apple appealed.
On appeal, we affirmed the jury’s finding of no invalid-
ity for all four patents. VirnetX, Inc. v. Cisco Sys., Inc., 767
F.3d 1308, 1323–24 (Fed. Cir. 2014) (“VirnetX I”). We also
1 VirnetX also alleged that Apple infringed certain
claims of U.S. Patent Nos. 6,502,135 (“the ’135 patent”) and
7,490,151 (“the ’151 patent”).
2 U.S. Patent No. 6,557,037 (“Provino”).
VIRNETX INC. v. APPLE INC. 5
affirmed the jury’s finding of infringement for many of the
claims of the two patents not related to the present appeal
(’135 and ’151 patents). 3 Id. at 1320–22. We reversed the
district court’s construction of the “secure communication
link” claim term, vacated the related infringement finding
for the two patents in this appeal (’504 and ’211 patents),
and vacated the damages award. Id. at 1317–19, 1319,
1323–24, 1325–34. We then remanded for further proceed-
ings. 4 Id. at 1334.
Apple did not file a request for rehearing on the inva-
lidity or infringement issues affirmed in VirnetX I. Our
mandate issued on December 23, 2014. Apple did not seek
Supreme Court review. The 90-day period to file a petition
for a writ of certiorari expired.
Meanwhile, in the parallel PTO reexamination pro-
ceedings, the Examiner had found all claims of the ’504 and
’211 patents unpatentable. The Examiner issued Right of
Appeal Notices (“RANs”) in May 2014. VirnetX appealed
the Examiner’s decisions to the Board.
VirnetX also petitioned the PTO to terminate the Apple
reexams based on the estoppel provision of § 317(b). The
PTO denied VirnetX’s petition in June 2015. J.A. 1659–67,
3138–48.
In September 2016, the Board affirmed the Examiner’s
findings that all claims of the ’504 and ’211 patents were
3 We reversed the district court’s conclusion related
to the doctrine of equivalents for one claim of the ’151 pa-
tent. See id. at 1322–23.
4 On remand in 2016, a jury found that Apple in-
fringed claims 1, 2, 5, and 27 of the ’504 patent and claims
36, 47, and 51 of the ’211 patent, and awarded damages.
VirnetX Inc. v. Apple Inc., 324 F. Supp. 3d 836 (E.D. Tex.
2017). We recently affirmed. See VirnetX Inc. v. Cisco Sys.,
Inc., No. 2018-1197, 748 F. App’x 332 (Fed. Cir. 2019).
6 VIRNETX INC. v. APPLE INC.
unpatentable. The Board denied VirnetX’s requests for re-
hearing.
After appealing the Board’s decisions in the Apple reex-
ams to this court, VirnetX moved to remand. It argued that
this court’s 2014 opinion was a “final decision” on Apple’s
attempt to prove invalidity under § 317(b). ECF No. 27. In
June 2017, a motions panel denied the motion and directed
the parties to address the issue in their merits briefing.
ECF No. 36.
III
In December 2011, Cisco also filed a request for inter
partes reexamination with the PTO. 5 Cisco’s Reexam No.
95/001,856 (“856 case” or “Cisco reexam”) challenged
claims 1–60 of the ’211 patent based on multiple grounds
of invalidity. Cisco based several of its arguments on the
Lendenmann reference. 6
After extensive proceedings, the Examiner issued a
RAN in January 2015. The RAN rejected claims 36–60 of
the ’211 patent as either anticipated or obvious. VirnetX
appealed to the Board. In September 2017, the Board af-
firmed the Examiner, finding claims 36–54 and 57–60 an-
ticipated by Lendenmann and claims 55 and 56 obvious
over Lendenmann and another reference. J.A. 88. VirnetX
moved for rehearing, which was denied. VirnetX then ap-
pealed.
We have jurisdiction under 28 U.S.C. § 1295(a)(4)(A).
5 In 2010, VirnetX also sued Cisco in district court,
alleging inter alia infringement of claim 1 of the ’211 pa-
tent.
6 Rolf Lendenmann, Understanding OSF DCE 1.1
for AIX and OS/2, IBM International Technical Support
Organization, pp. 1–45 (Oct. 1995) (“Lendenmann”).
VIRNETX INC. v. APPLE INC. 7
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
8 VIRNETX INC. v. APPLE INC.
or could have raised in such civil action or inter
partes reexamination proceeding, and an inter
partes reexamination requested by that party or its
privies on the basis of such issues may not thereaf-
ter be maintained by the Office, notwithstanding
any other provision of this chapter.
The issue here is very narrow. Apple does not dispute
the underlying procedural facts relevant to § 317(b), which
highlight the advanced stage of these proceedings.
In 2010, Apple was sued for patent infringement. There
is no dispute that in that “civil action arising . . . under”
28 U.S.C. § 1338, Apple raised an affirmative defense of in-
validity on multiple grounds. 35 U.S.C. § 317(b). Thus,
Apple had the “burden of proving the invalidity” of the as-
serted claims of both the ’504 and ’211 patents. Id.
In 2012, Apple presented its invalidity defenses to a
jury. After a week-long trial, the jury concluded Apple
failed to sustain its burden of proving the invalidity of any
asserted claim of the ’504 or ’211 patent.
In 2013, the district court determined that in light of
the record at trial, substantial evidence supported the
jury’s finding. The district court entered final judgment.
In 2014, Apple pursued an appeal of that decision here.
Specifically, Apple argued that “the asserted claims are an-
ticipated by the Kiuchi reference.” VirnetX I, 767 F.3d at
1323. After considering Apple’s challenges, we affirmed
the district court’s decision on the issue of invalidity. Id.
at 1323–24. Apple did not file a request for rehearing. Ap-
ple elected not to seek Supreme Court review. The 90-day
period to file a petition for certiorari expired.
In 2015, VirnetX petitioned the PTO to terminate Ap-
ple’s pending reexaminations based on the estoppel provi-
sion of § 317(b). The PTO refused, accepting Apple’s
argument that there was not yet a final decision on valid-
ity. J.A. 1661–63.
VIRNETX INC. v. APPLE INC. 9
On appeal, the sole issue is whether there has been a
“final decision” entered against Apple that it “has not sus-
tained its burden of proving” invalidity, triggering estoppel
of its parallel PTO reexam proceedings.
Apple does not dispute that since it first raised the is-
sue in 2010, it has now lost on invalidity before the jury,
the district court, and this court. Nor does it dispute that
it allowed the time to petition for certiorari of the validity
issues in the first appeal to lapse. Instead, Apple takes the
position that there was no final decision due to a hypothet-
ical future appeal.
Apple’s argument proceeds as follows. In VirnetX I, we
vacated and remanded other issues unrelated to invalidity,
including infringement and damages. In Apple’s view, af-
ter those issues are decided on remand and reviewed in a
second appeal, it may choose to file a petition for certiorari
of those non-validity issues. In so doing, it may also ask
the Supreme Court to look at any issues from the first ap-
peal—including the validity determination.
Thus, the Court might elect to examine the validity is-
sues at some point in the future. The Court has the ability
to consider not only those issues “‘before the court of ap-
peals upon the second appeal,’” but also the “questions
raised on the first appeal.” Mercer v. Theriot, 377 U.S. 152,
153–54 (1964) (per curiam) (quoting Hamilton-Brown Shoe
Co. v. Wolf Bros. & Co., 240 U.S. 251, 257 (1916)); see also
Major League Baseball Players Ass’n v. Garvey, 532 U.S.
504, 508 n.1 (2001) (per curiam) (noting Supreme Court
has “authority to consider questions determined in earlier
stages of the litigation where certiorari is sought from the
most recent of the judgments of the Court of Appeals”). Ac-
cording to Apple, the decision is only final when there is no
potential that the Supreme Court might some day examine
the invalidity issue during a second appeal.
10 VIRNETX INC. v. APPLE INC.
In response, VirnetX contends there is a “final deci-
sion” on a party’s attempt to prove invalidity after the
party fails to petition for certiorari within the 90-day pe-
riod.
Two reasons compel the conclusion that there has been
a final decision on validity in this case. First, our decision
in Fairchild (Taiwan) Corp. v. Power Integrations, Inc., 854
F.3d 1364 (Fed. Cir. 2017), controls and holds that there is
a “final decision” under § 317(b) once the time to file a cer-
tiorari petition has passed. Second, even if Fairchild did
not foreclose Apple’s argument, the plain language of the
statute and its purpose advise against Apple’s definition of
a “final decision” on the issue of invalidity.
A
Since the PTO’s decision in 2016, we have ruled on this
very issue. Fairchild directly addressed a situation in
which validity was affirmed but other issues in the case
were remanded. Fairchild holds that if a finding of no in-
validity has been affirmed on appeal and remand of other
issues will not “have any affect” on validity, the decision is
“final” once the 90-day deadline for a certiorari petition on
the validity determination has passed. Id. at 1366.
Fairchild announced this holding despite the fact that
there is always some “potential” for future Supreme Court
review if the entire case is taken up. Accordingly, Fairchild
requires we reject Apple’s position.
In Fairchild, we began our analysis by restating our
earlier holding in Bettcher that estoppel “applies when ‘all
appeals have terminated.’” Id. at 1365 (quoting Bettcher,
661 F.3d at 646). We then concluded that is “precisely the
situation here.” Id. Namely, the district court “entered
judgment against Power Integrations, holding that it failed
to prove claims 6, 7, 18, and 19 were obvious over [the cited
prior art]. This court affirmed the holding, and the time to
VIRNETX INC. v. APPLE INC. 11
petition for a writ of certiorari has passed.” Id. at 1365–66
(emphasis added).
As in Fairchild, the district court here entered judg-
ment against Apple on the issue of invalidity, we affirmed
the no-invalidity finding on appeal in VirnetX I, and the
time to file a petition for certiorari on the issue has long
since passed. Under Fairchild, that constitutes “a final de-
cision” under § 317(b) with respect to Apple’s failure to
prove invalidity.
Resisting this conclusion, Apple argues that if any non-
invalidity issues remain in the district court case related to
the patent, then the validity decision cannot be final under
§ 317(b). Since VirnetX I vacated and remanded other is-
sues (i.e., infringement and damages) on both patents at
issue, Apple contends that it waited until all the issues
with this patent case are decided before bundling it up in a
petition for certiorari. Consequently, Apple’s position re-
quires resolution of the entire case—or at least all issues on
each patent, including infringement, invalidity, and dam-
ages—before a validity decision is considered “final.”
Fairchild rejected such arguments under almost iden-
tical circumstances. There, we had also vacated and re-
manded other parts of the case for additional proceedings.
Id. at 1365 (explaining prior appeal upheld obviousness but
reversed jury’s findings on infringement, and “remanded
for further proceedings unrelated to the ’972 patent
claims”). In turn, we rejected the argument that this ren-
ders the decision not “final” under § 317(b). Id. at 1366.
We reasoned:
While it is true that in [the prior appeal] this court
vacated and remanded for additional proceedings,
we cannot agree with Power Integrations that this
renders the decision not “final” for § 317(b) pur-
poses. Critically, those proceedings are unrelated
to the ’972 patent. By its terms, § 317(b) is
12 VIRNETX INC. v. APPLE INC.
concerned with a final decision ‘that the party has
not sustained its burden of proving the invalidity
of any patent claim.’ And here, Power Integrations
does not suggest, nor is there any reason to believe,
that any unresolved issue on remand would have
any effect on the now-final ’972 patent validity de-
terminations.
Id. (emphasis added) (quoting 35 U.S.C. § 317(b)).
Likewise, here, Apple does not point to any issue in the
VirnetX I remand that substantively bears on the finding
of no invalidity. Nor could it. Indeed, the only difference
here is that VirnetX I remanded some infringement and
damages issues related to the ’504 and ’211 patents. But
Apple fails to explain how any of these unresolved issues
would “have any effect on the now-final . . . validity deter-
minations” involving those patents. 7 Id. Accordingly,
Fairchild’s reasoning leaves no doubt that § 317(b) estop-
pel applies.
Finally, Apple contends Fairchild cannot control be-
cause no party in that case expressly argued that the Su-
preme Court might still take up the invalidity issue on a
future appeal under Mercer. But Fairchild’s reasoning im-
plicitly forecloses such an argument. Fairchild concluded
that “all appeals” had terminated, 854 F.3d at 1365,
7 At oral argument, Apple could not point to a single
example illustrating how an aspect of the infringement re-
mand might meaningfully affect or implicate the invalidity
ruling this court affirmed in 2014 in VirnetX I. Instead,
Apple offered only speculation. Its argument boiled down
to the general conjecture that the district court “could”
have a motion to set aside a validity determination even
after the mandate issues based on arguments made about
infringement. Oral Argument at 29:20–51, No. 2017-1591,
http://www.cafc.uscourts. gov/oral-argument-recordings.
VIRNETX INC. v. APPLE INC. 13
despite the fact that other issues in that case remained
pending for potential appeal and petition for certiorari. Ap-
ple can disagree with that conclusion, but that is not a ba-
sis for ignoring binding authority. We are bound to follow
the decision of a prior panel, and its reasoning does not
leave the question open.
In sum, § 317(b) applies here despite the fact that is-
sues unrelated to invalidity were remanded.
The dissent takes the view that Fairchild is inapplica-
ble. But it relies on reasons that were not material to the
outcome in Fairchild. In addition, the dissent’s attempt to
distinguish Fairchild suffers from several additional infir-
mities.
According to the dissent, in Fairchild “Power Integra-
tions did not appeal the court’s favorable ruling on infringe-
ment because it prevailed on that issue.” Opinion
concurring in part and dissenting in part (“dissent”) at 4
(emphasis added). In turn, the dissent leaps to the conclu-
sion that Power Integrations could not have realistically
pursued certiorari review of the ’972 patent’s validity be-
cause it “prevailed” on infringement. Id. In the dissent’s
view, “once Power Integrations prevailed on infringement,
the case against it was concluded” and the potential for any
further Supreme Court review was eliminated. Id. at 4–5.
There is no support for these statements.
Fundamentally, infringement and invalidity are sepa-
rate “issues.” Pandrol USA, LP v. Airboss Ry. Prod., Inc.,
320 F.3d 1354, 1364 (Fed. Cir. 2003) (“Supreme Court prec-
edent and our cases make clear that patent infringement
and patent validity are treated as separate issues.”).
Fairchild never held that resolving infringement resolves
invalidity. Indeed, Fairchild was interpreting an estoppel
statute triggered by a decision on invalidity, not infringe-
ment.
14 VIRNETX INC. v. APPLE INC.
Moreover, the dissent’s position unravels in light of the
procedural posture in Fairchild. Power Integrations did
not simply argue that it did not infringe the ’972 patent.
Nor did it merely raise invalidity as an affirmative defense
to liability. Rather, Power Integrations advanced a sepa-
rate counterclaim for declaratory judgment that the ’972
patent was invalid. See Plaintiff’s Fourth Amended An-
swer and Counterclaims at 23, Power Integrations, Inc. v.
Fairchild Semiconductor Int’l, Inc. et al, No. 1:08–cv–
00309–LPS (D. Del. July 7, 2011) (Dkt. No. 409). There-
fore, to say it “prevailed” and its case “concluded” on that
issue due to a non-infringement ruling is not correct.
It is black letter law that non-infringement does not
moot a counterclaim regarding invalidity. “A party seeking
a declaratory judgment of invalidity presents a claim inde-
pendent of the patentee’s charge of infringement.” Cardi-
nal Chem. Co. v. Morton Int’l, 508 U.S. 83, 96 (1993). Thus,
“appellate affirmance of a judgment of noninfringement,
eliminating any apprehension of suit, does not moot a de-
claratory judgment counterclaim of patent invalidity.”
MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118, 132 n.11
(2007); see also Telcordia Techs., Inc. v. Cisco Sys., Inc., 612
F.3d 1365, 1375 (Fed. Cir. 2010) (“[T]his court’s affirmance
of the district court’s non-infringement findings as to the
’306 patent does not moot Cisco’s invalidity counterclaim
on cross-appeal.”).
In addition, the dissent speculates as to why the litigant
chose not to seek further review. The dissent appears to
assume that if a party is found not liable for certain ac-
cused products infringing a patent, as in Fairchild, that
party no longer has the incentive to challenge the underly-
ing property right’s validity. Dissent at 5–6. This assump-
tion fails for several reasons. First, inferring the subjective
intent of the litigants—either on remand or in petitioning
for certiorari—is inappropriate. Fairchild never made
such fact findings. Fairchild never relied on such infer-
ences either. Put simply, Fairchild did not base its decision
VIRNETX INC. v. APPLE INC. 15
on speculation as to whether remand would impact a
party’s subjective “decision” to pursue certiorari review or
whether its decisions regarding petitioning were “reasona-
ble,” id. at 5–6. Second, such speculation is irrelevant. The
controlling inquiry is mandated by statute, which makes
no mention of a party’s motives for petitioning for certiorari
review. Third, it is inaccurate. Regardless of a finding of
no liability on the presently accused products, an accused
infringer may well have reasons for trying to invalidate the
patent (e.g., to guarantee its freedom to operate).
But the dissent suffers from a more fundamental flaw.
The dissent appears to suggest that in Fairchild, “potential
future review” by the Supreme Court was not an option.
Id. at 4. In light of Mercer, there is no basis for that posi-
tion. Indeed, it runs headlong into the dissent’s own insist-
ence that the Supreme Court’s discretion to take up
certiorari review of earlier issues in a case is broad. On the
one hand, the dissent acknowledges that a “petition for writ
of certiorari can expose the entire case to review,” id. at 10
(quoting Christianson v. Colt Indus. Operating Corp., 486
U.S. 800, 817 (1988)), and the Supreme Court has “juris-
diction to consider all of the substantial federal questions
determined in the earlier stages of the litigation,” id. (quot-
ing Reece v. Georgia, 350 U.S. 85, 87 (1955)). On the other
hand, the dissent contends that the litigant’s decision in
Fairchild “all but foreclosed the possibility that the inva-
lidity issue could be subject to potential future review by
the Supreme Court.” Id. at 4. A plain reading of Fairchild,
however, confirms it never presumed to curtail the Su-
preme Court’s discretion under Mercer to review issues
raised earlier in a case.
Finally, the dissent is concerned that the majority opin-
ion somehow “intrudes on the Supreme Court’s constitu-
tional prerogative whether to take up the invalidity issue.”
Id. at 11. It does not. Like Fairchild, our decision concerns
estoppel of duplicative administrative proceedings before
the PTO. It has no bearing on the Supreme Court’s
16 VIRNETX INC. v. APPLE INC.
discretion to accept or reject a petition for certiorari on any
issue—nor could it.
In sum, we disagree with the dissent’s efforts to rewrite
Fairchild. Fairchild speaks for itself. The controlling stat-
ute is trained on a “final decision” that the party has not
sustained its “burden of proving the invalidity” of the pa-
tent claim. Fairchild, 843 F.3d at 1366. As the dissent
acknowledges, the reasoning at the heart of the Fairchild
decision is that estoppel applied to the duplicative PTO
reexam because there was “no suggestion,” dissent at 6,
that “any unresolved issue on remand would have any ef-
fect on the now-final patent validity determinations” from
the district court, Fairchild, 854 F.3d at 1366. That is, the
remand would have no substantive effect on the validity
determination. The record is clear that is the same situa-
tion here.
B
Even if Fairchild did not control, the statutory text and
purpose of § 317(b) compels us to reject Apple’s theory that
the entire case must be resolved. Apple essentially asks us
to rewrite the statute, triggering estoppel only when there
is a “final judgment” on all issues in a case.
But the statute’s text is clear. The statute only re-
quires “a final decision” on a precise issue—whether the
party has “sustained its burden of proving the invalidity of
any patent claim in suit.” 35 U.S.C. § 317(b). The statute
makes no mention of resolving the entire case. Nor does it
require resolution of all other issues related to a patent
(e.g., infringement or damages). Instead, the plain lan-
guage of the statute demands a party cease duplicative in-
validity challenges via reexams in the PTO once “a final
decision” has been reached on an invalidity challenge in a
civil action.
This reading of the plain text is further reinforced by
the statute’s purpose. The statute is intended to protect
VIRNETX INC. v. APPLE INC. 17
patent holders against “harassment” from duplicative liti-
gation on the issue of invalidity. See 145 Cong. Rec. 29,276
(Nov. 9, 1999) (Conference Report on H.R. 1554) (“Subtitle
F creates a new section 317 which sets forth certain condi-
tions by which inter partes reexamination is prohibited to
guard against harassment of a patent holder.”); see also
Function Media, L.L.C. v. Kappos, 508 F. App’x 953, 955–
56 (Fed. Cir. 2013) (“This provision existed to prevent du-
plicative, harassing actions against a patentee. If a defend-
ant brought an invalidity challenge in a district court
litigation and was unsuccessful, it is not permitted to bring
the same challenge in an inter partes reexamination.”).
Apple concedes that § 317(b) was intended to prevent
duplicative litigation. Apple’s Br. 40–41. Yet Apple’s posi-
tion increases the likelihood duplicative litigation will oc-
cur. If no decision on invalidity is “final” until any
“prospect of future Supreme Court review” is eliminated,
Apple’s Br. 36, estoppel will rarely apply. In light of the
legislative intent, it is doubtful Congress created an estop-
pel provision that would allow a PTO proceeding to press
forward even after all appellate deadlines have elapsed
merely because there is a potential that the Supreme Court
may one day reconsider the invalidity issue—in many
cases, years later—while examining the rest of the case. 8
Accordingly, the statutory purpose confirms that “a fi-
nal decision” triggers estoppel when the invalidity chal-
lenge is decided on appeal and the time for petitioning for
certiorari has passed—regardless of the fact review of the
8 Moreover, there is no indication that Congress con-
sidered the type of review contemplated in Mercer as part
of the definition of a regular appeals process for reaching a
“final decision” on invalidity. This is of no surprise given
the statute is trained on the finality of a particular issue,
rather than finality of the entire case.
18 VIRNETX INC. v. APPLE INC.
entire case could occur at some point in the future under
Mercer.
C
Apple’s remaining arguments against the application
of § 317(b) here are unpersuasive. Apple first suggests that
Fairchild is inconsistent with Bettcher. Apple’s Br. 32–33,
37. In Apple’s view, Bettcher held that § 317(b) is not sat-
isfied until the Supreme Court can no longer review a case.
Bettcher never reached such a holding. Bettcher con-
cerned a different estoppel provision, pre-AIA 35 U.S.C.
§ 315(c) (2006). 9 The question was whether § 315(c) estop-
pel attaches at a far earlier stage (before any appeal is pur-
sued). In Bettcher, the district court concluded that
estoppel barred further civil litigation “as soon as the ex-
aminer finished the reexamination and the Right of Appeal
Notice was sent to the patentee”—i.e., before there is even
an appeal to the Board, let alone an appeal to the Federal
Circuit. Id. at 636. On appeal, we rejected that conclusion.
We held that “the estoppel provision of § 315 is triggered
not when examination is completed but only after all ap-
peal rights have been exhausted.” Id. at 642–43.
The panel then rejected the argument that § 317(b)
somehow showed that § 315(c) estoppel must apply as soon
as the examiner finishes the reexam. See id. at 643. The
panel observed that like § 315(c), estoppel under § 317(b)
applies “when reexamination and all appeals have termi-
nated.” Id. at 646 (emphasis added).
Bettcher addressed appeal rights to the Board and the
Federal Circuit. It did not analyze how petitions for
9 Section 315(c) concerns estoppel in the opposite di-
rection: when the PTO’s determination in a reexam estops
a party from asserting invalidity in a civil action. Id. at
643.
VIRNETX INC. v. APPLE INC. 19
certiorari impact § 317(b). 10 Moreover, Bettcher did not ad-
dress the critical inquiry here as to whether a “final deci-
sion” regarding the issue of invalidity under § 317(b) is
affected by remand of issues unrelated to invalidity.
By contrast, Fairchild did reach these issues.
Fairchild held that estoppel “applies when ‘all appeals’
have terminated,” meaning after the district court’s judg-
ment of no-invalidity was affirmed on appeal and “the time
to petition for a writ of certiorari has passed.” Id. at 1365–
66 (quoting Bettcher, 661 F.3d at 646). The panel reached
this conclusion despite the fact that issues unrelated to pa-
tent validity were remanded for further proceedings.
Properly understood, Fairchild is an extension of Bettcher
to Supreme Court certiorari review. Apple’s attempt to
10 Bettcher concluded that the estoppel provision of
§ 315 attaches when all appeal rights are exhausted. As
the panel observed, the opening sections of the statute list
those appeal “rights” for both the patent owner and the
third-party requestor, § 315(a)–(b), which consist of ap-
peals from (1) the examiner to the Board, and (2) the Board
to this court. Id. at 644 (“The estoppel provision of subsec-
tion (c) thus falls immediately following the establishment
of both parties’ rights of appeal, including appeal to this
court.”). Bettcher did not address whether petitions for cer-
tiorari are considered “appeals,” or whether certiorari re-
view by the Supreme Court is a “right.” In VirnetX’s view,
an appeal as of right is a different procedural mechanism
than a writ of certiorari. VirnetX Reply Br. 12–13; see also
City & Cty. of San Francisco, Calif. v. Sheehan, 135 S. Ct.
1765, 1774 (2015) (“Because certiorari jurisdiction exists to
clarify the law, its exercise ‘is not a matter of right, but of
judicial discretion.’” (quoting Supreme Court Rule 10)).
Though we need not reach such questions, they underscore
the fact that Bettcher simply did not reach the issue of cer-
tiorari review now governed by Fairchild.
20 VIRNETX INC. v. APPLE INC.
manufacture an inconsistency between these two cases has
no merit.
Apple’s reliance on Fresenius fares no better. Fresenius
USA, Inc. v. Baxter Int’l, Inc., 721 F.3d 1330 (Fed. Cir.
2013). Apple concedes that Fresenius “did not construe
§ 317(b).” Apple’s Br. 39. As such, Apple admits Fresenius
has no direct bearing on our interpretation of this statutory
estoppel provision.
In addition, Fresenius concerned an entirely different
issue involving res judicata from a “final judgment.” Even
within the distinct realm of res judicata, Fresenius took
great care to “distinguish between different concepts of fi-
nality.” Id. at 1340. In Fresenius, we specifically addressed
whether a judgment in an infringement case is “sufficiently
final” so that it is “immune to the effect of the final judg-
ment in the PTO proceedings, as affirmed by this court in
In re Baxter.” Id. at 1341 (discussing In re Baxter Int’l, Inc.,
678 F.3d 1357 (Fed. Cir. 2012)).
The issue in Fresenius arose due to the fact that while
the appeal of an infringement action was pending, we af-
firmed the PTO reexamination finding the patent claims
invalid in In re Baxter. As a result, the PTO canceled the
claims. Id. at 1335. Despite the intervening cancellation,
the patent owner argued that the district court’s judgment
was “final” for purposes of res judicata such that the liabil-
ity finding and past damages award in the pending litiga-
tion could not be disturbed. Id. at 1340. We disagreed.
While the district court in 2007 had entered “a judg-
ment final for purposes of appeal,” we concluded that it was
“not sufficiently final to preclude application of the inter-
vening final judgment in In re Baxter.” Id. at 1341. More-
over, the district court’s original judgment had since been
set aside and the remand was not sufficiently final for res
judicata purposes. Id. “To rise to that level, the litigation
must be entirely concluded so that [the] cause of action
[against the infringer] was merged into a final judgment
VIRNETX INC. v. APPLE INC. 21
. . . one that ‘ends the litigation on the merits and leaves
nothing for the court to do but execute the judgment.’” Id.
(quoting Mendenhall v. Barber–Greene Co., 26 F.3d 1573,
1580 (1994)). We concluded that the remand did not end
the controversy, leaving only the execution of the judg-
ment, given that several aspects of the litigation (e.g., roy-
alty damages, injunctive relief) remained unresolved. Id.
Fresenius’s analysis of a “final judgment” for purposes
of res judicata does not instruct our understanding of a “fi-
nal decision” for purposes of § 317(b) estoppel. Indeed, it
only underscores why we must follow Fairchild. Fairchild
found estoppel absent a final judgment. Indeed, after mul-
tiple other issues in the litigation, including infringement
and damages for certain patents, were remanded,
Fairchild concluded nonetheless that there was a “final de-
cision” on the narrow issue of invalidity—which is all that
the statute requires to trigger estoppel. The reasoning in
Fairchild, not Fresenius, governs our application of
§ 317(b).
Apple also briefly argues that this interpretation of the
statute generates duplicative proceedings for the patent
challenger. Apple’s Br. 41. In Apple’s view, it must seek
“interlocutory” review rather than waiting for the case to
be entirely resolved. Id. Apple’s argument misses the
mark. Section 317(b) is concerned with preventing dupli-
cative litigation against the patent owner. Of course, we
recognize the challenging nature of these proceedings for
both parties. The present actions involve multiple patents
and various issues, which create certain complexities for
pursuing appeals before this court and seeking certiorari
before the Supreme Court. Some of those complexities
might be ameliorated by requiring final judgment of an en-
tire case. But that does not empower us to rewrite a statute
that requires only a final decision on the issue of invalidity.
Furthermore, such interlocutory and piecemeal concerns
were also present in Fairchild. Nonetheless, estoppel ap-
plied.
22 VIRNETX INC. v. APPLE INC.
Finally, Apple’s arguments based on the PTO’s inter-
pretations carry no force. They fail for several reasons.
First, Apple fails to explain why the PTO’s interpreta-
tions of § 317(b) is entitled to Chevron deference. As dis-
cussed above, the statutory text and purpose leave no
ambiguity. Where “the intent of Congress is clear, that is
the end of the matter.” Chevron U.S.A. Inc. v. NRDC, Inc.,
467 U.S. 837, 842 (1984). Therefore, Chevron deference
does not apply. 11 12
Second, Skidmore deference is not appropriate either.
Under Skidmore, the weight given to a particular agency
interpretation “will depend upon the thoroughness evident
in its consideration, the validity of its reasoning, its con-
sistency with earlier and later pronouncements, and all
those factors which give it power to persuade, if lacking
11 Apple also suggests that Bettcher requires defer-
ence. Not so. Bettcher concluded the statute was unambig-
uous. Bettcher, 661 F.3d at 646 (“[W]e believe that § 317(b)
is clear . . . .”). Nonetheless, Apple points to Bettcher’s sub-
sequent discussion of the deference it “would” give the
MPEP had it reached the issue. Id. Apple’s reliance on a
single line of dicta from Bettcher is unavailing. Even if it
were not dicta, Bettcher’s statement concerned deference to
the Manual of Patent Examining Procedure (“MPEP”)
§ 2686.04. Id. As explained later, that section of the MPEP
does not resolve the issue at hand.
12
Apple also suggests the underlying PTO denial of
the petition to terminate here is entitled to Chevron defer-
ence. In support of this position, Apple cites only to In re
Affinity Labs of Texas, LLC, 856 F.3d 883, 894 n.5 (Fed.
Cir. 2017). The cited footnote from Affinity Labs did not
concern deference. Rather, it concerned whether PTO rul-
ings on petitions to terminate are reviewable on appeal. Id.
(analyzing stages of PTO decision-making process as re-
lated to reviewability).
VIRNETX INC. v. APPLE INC. 23
power to control.” United States v. Mead Corp., 533 U.S.
218, 228 (2001) (quoting Skidmore v. Swift & Co., 323 U.S.
134, 140 (1944)). None of the considerations favoring def-
erence are present here. For example, contrary to Apple’s
position, the PTO has never established a “consistent” con-
struction of § 317(b). Indeed, aside from the decision below,
Apple cites no other decision in which the PTO has inter-
preted § 317(b) to extend passed the deadline for certiorari
review of the invalidity issue to hypothetical petitions aris-
ing from appeals of non-invalidity issues on remand. Thus,
deference is unwarranted.
Third, regardless of whether deference applies, none of
Apple’s citations resolve the specific issue at hand. For in-
stance, no PTO regulation or MPEP section states that a
decision is not “final” for purposes of § 317(b) if non-inva-
lidity issues are remanded. Nor do any of these provisions
state that a final judgment is required, or that as long as
the potential for Supreme Court review from a later peti-
tion exists, § 317(b) estoppel does not attach. Indeed, none
of these provisions even mention Supreme Court certiorari
review. 13
For the reasons above, § 317(b) estoppel applies to the
Apple reexams. Accordingly, we vacate and remand with
13 Other PTO regulations suggest appeals terminate
when our mandate issues. See, e.g., 37 C.F.R. § 1.197 (“An
appeal to the U.S. Court of Appeals for the Federal Circuit,
whether from a decision of the Board or a judgment in a
civil action, is terminated when the mandate is issued by
the Court.”). Notably, 37 C.F.R. § 1.979, which is the reg-
ulation interpreting pre-AIA § 316(a) permitting the PTO
to issue a certificate of cancellation “only after all appeals
have terminated,” Bettcher, 661 F.3d at 644–45, applies the
same interpretation. See 37 C.F.R. § 1.979(b) (providing
that an “appeal [to this Court] is considered terminated
when the mandate is issued by the Court”).
24 VIRNETX INC. v. APPLE INC.
instructions to terminate the Apple reexams with respect
to claims 1–35 of the ’504 patent and claims 36–59 of the
’211 patent. 14
III
We now turn to VirnetX’s challenge to the merits of the
Apple and Cisco reexams that pertain to the claims not
subject to estoppel. The Board affirmed the Examiner’s re-
jection of all claims of the ’504 and ’211 patents. On appeal,
VirnetX takes a kitchen sink approach, arguing that the
Board decisions incorrectly construe certain claims, shift
the burden to the patent owner to prove patentability, and
lack substantial evidence. VirnetX’s arguments are unper-
suasive. Therefore, we affirm the Board’s decision on all
remaining claims of both patents in the Apple reexam not
subject to § 317(b) estoppel and fully affirm the Board’s de-
cision regarding the claims of the ’211 patent in the Cisco
reexam. 15
14 Apple appears not to dispute that estoppel extends
to the dependent claims here. Section 317(b) bars main-
taining a reexam based on issues which that party “raised”
or “could have raised” in the civil action. The PTO found
that Apple “was aware of all prior art raised prior to Octo-
ber 31, 2012 in the present reexamination proceeding with
respect to claims 1–35 [of the ’504 patent], and could have
raised issues with respect to that prior art in the litigation.”
J.A. 1666, 3147 (same regarding claims 36–59 of the ’211
patent). No new prior art was added after October 31,
2012, when trial began in the litigation. Indeed, Apple
never amended or supplemented its original October 18,
2011 reexamination requests to add new prior art.
15 The parties filed supplemental briefing regarding
the relationship between this case and other recently de-
cided matters. ECF Nos. 95, 96, 105. Apple primarily ar-
gues that collateral estoppel renders various claims of the
VIRNETX INC. v. APPLE INC. 25
VirnetX contends that the Board improperly construed
the term “indication” by ignoring its disclaimer argument.
VirnetX argued before the Board that the patent dis-
claimed “conventional” DNS functions—e.g., looking up
and returning an IP address or a public key for the re-
quested webpage. In VirnetX’s view, such conventional
functions therefore do not qualify as “indications” that the
system “supports establishing a secure communication
link.” J.A. 1348, 2892, 4334–41. But the Board expressly
acknowledged VirnetX’s assertion that the patents “dispar-
aged and disclaimed” systems that use no more than “con-
ventional” DNS functions. J.A. 26–30, 49–54, 77–80. It
then rejected this argument in a systematic and well-rea-
soned fashion. “Disavowal requires ‘expressions of mani-
fest exclusion or restriction, representing a clear disavowal
of claim scope.’” Epistar Corp. v. ITC, 566 F.3d 1321, 1335
(Fed. Cir. 2009) (quoting Teleflex, Inc. v. Ficosa N. Am.
Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002)). We agree with
the Board that the specification fails to evidence such a
clear disavowal here. The Board’s construction is therefore
consistent with the broadest reasonable interpretation of
“indication.”
Turning to VirnetX’s next challenge, VirnetX contends
that the Board failed to make adequate findings and im-
permissibly shifted the burden to VirnetX with respect to
three claim limitations of the ’504 and ’211 patents in the
Apple reexams. The limitations are “indicating,” “connect-
able,” and “authenticate.” Contrary to VirnetX’s
’504 and ’211 patents invalid. As an initial matter, Apple’s
arguments are mooted in part by our holding in the present
matter affirming the Board’s decision that certain claims
of the ’504 and ’211 patent are unpatentable. Otherwise,
Apple’s arguments are unpersuasive. Apple has failed to
show why collateral estoppel is appropriate under these
circumstances.
26 VIRNETX INC. v. APPLE INC.
arguments, the Board’s conclusions are well supported by
the underlying factual findings made by the Examiner.
The Examiner found that Apple had carried its burden of
proving unpatentability by “a preponderance of the evi-
dence.” See Rambus Inc. v. Rea, 731 F.3d 1248, 1255 (Fed.
Cir. 2013) (quoting Ethicon, Inc. v. Quigg, 849 F.2d 1422,
1427 (Fed. Cir. 1988)). Sitting as an appellate body, the
Board then reviewed those findings and considered
whether VirnetX had raised any issue on appeal that re-
quired setting aside the Examiner’s decisions. Although
“the examiner retains the burden to show invalidity,” on
appeal “the applicant must identify to the Board what the
examiner did wrong.” In re Jung, 637 F.3d 1356, 1365–66
(Fed. Cir. 2011). The Board considered VirnetX’s argu-
ments challenging the Examiner’s rejections and properly
explained why each lacked merit. VirnetX “failed to offer
any convincing reason to find otherwise.” In re Cree, Inc.,
818 F.3d 694, 702 n.3 (Fed. Cir. 2016). This “is not burden-
shifting.” Id.
VirnetX further argues that the Board’s findings in the
Cisco reexam regarding the “indicating” limitations intro-
duced improper new arguments. We disagree. According
to VirnetX, the Board relied on a new ground for concluding
that Lendenmann’s disclosure of “returning a network ad-
dress” and “access control lists” (“ACLs”) meet the claim
limitation. The Board’s findings constitute a new ground
of rejection supporting reopening of prosecution if the
Board “finds facts not found by the examiner regarding the
differences between the prior art and the claimed inven-
tion, and these facts are the principal evidence upon which
the Board’s rejection was based.” In re Leithem, 661 F.3d
1316, 1320 (Fed. Cir. 2011). “[T]he ultimate criterion of
whether a rejection is considered ‘new’ in a decision by the
[B]oard is whether [applicants] have had fair opportunity
to react to the thrust of the rejection.” In re Adler, 723 F.3d
1322, 1327 (Fed. Cir. 2013) (modifications in original). In
VIRNETX INC. v. APPLE INC. 27
light of the proceedings below, we conclude that VirnetX
had a fair opportunity to react to the evidence.
VirnetX also contends that the Board’s findings that
Lendenmann teaches the “indicating” element lack sub-
stantial evidence. However, the Board found Lenden-
mann’s disclosure of “returning a network address,”
“ACLs,” and certain domain names teach the limitation.
Based on the record here, there is substantial evidence to
support the Board’s conclusion that this limitation is
taught.
As for the “authenticating” limitation, VirnetX contests
the Board’s determination that Provino discloses a DNS
system configured “to authenticate the query,” as recited in
dependent claims 5, 23, and 47. VirnetX’s arguments do
not unsettle the Board’s conclusions that Provino’s sys-
tem—including its “query” and “firewall 30”—teach this
limitation. Furthermore, contrary to VirnetX’s view, no
material aspect of the Board’s analysis of the relationship
between authorization and “authentication” was new or
improper. Based on the record developed before the Exam-
iner and reviewed by the Board, substantial evidence sup-
ports the Board’s conclusions regarding the
“authenticating” limitation.
Next, VirnetX argues that the Board failed to address
arguments it made in the Cisco reexam as to why depend-
ent claim 47 of the ’211 patent is patentable over Lenden-
mann. There is little indication that VirnetX properly
argued claim 47’s patentability separately from independ-
ent claims 36 and 60. The Board was therefore justified in
concluding “Patent Owner does not provide additional ar-
guments in support of” claim 47. J.A. 88. Regardless, the
record confirms that based on the Examiner’s findings, the
Board properly concluded claim 47 was unpatentable.
Finally, VirnetX also argues that the reexams here are
unconstitutional. VirnetX took the position that its
28 VIRNETX INC. v. APPLE INC.
challenge would be resolved by the Supreme Court’s deci-
sion regarding the constitutionality of inter partes review
(“IPR”) in Oil States Energy Services, LLC v. Greene’s En-
ergy Group, LLC, 138 S. Ct. 1365 (2018). See VirnetX’s Br.
66–67 (citing arguments in Oil States petition for certiorari
that IPRs are unconstitutional under the Seventh Amend-
ment and Article III). While reexams and IPRs arise under
different statutes, VirnetX’s argument treats them as in-
terchangeable. The Supreme Court has rejected the
grounds advanced in Oil States. 138 S. Ct. at 1379. Vir-
netX’s challenge is therefore moot.
We have considered VirnetX’s remaining arguments
and find them unpersuasive.
CONCLUSION
For the foregoing reasons, we vacate the Board’s deci-
sions in the Apple reexams with respect to claims 1–35 of
the ’504 patent and claims 36–59 of the ’211 patent and re-
mand with instructions to terminate. However, we affirm
the Board’s decisions in the Apple reexams that claims 36–
60 of the ’504 patent and claims 1–35 and 60 of the ’211
patent are unpatentable. We further affirm the Board’s de-
cision in the Cisco reexam that claims 36–60 of the ’211 pa-
tent are unpatentable.
AFFIRMED-IN-PART, VACATED-IN-PART, AND
REMANDED
COSTS
The parties shall bear their own costs.
United States Court of Appeals
for the Federal Circuit
______________________
VIRNETX INC.,
Appellant
v.
APPLE INC., CISCO SYSTEMS, INC.,
Appellees
______________________
2017-1591, 2017-1592, 2017-1593
______________________
Appeals from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in Nos. 95/001,788,
95/001,789, 95/001,856.
______________________
REYNA, Circuit Judge, concurring-in-part and dissenting-
in-part.
This appeal involves the Supreme Court’s authority to
take appeals involving U.S. patents under Article III of the
U.S. Constitution.
The majority holds that Apple’s petitions for inter
partes reexaminations are barred under 35 U.S.C. § 317(b)
(2006). Although I agree with the majority’s disposition of
this case in all other respects, I do not agree that reexami-
nation is precluded. Because Apple may still appeal this
court’s affirmance of no invalidity, there is no “final deci-
sion” that triggers a bar under § 317(b). Accordingly, I con-
cur-in-part and dissent-in-part.
2 VIRNETX INC. v. APPLE INC.
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
1 In a companion case, Apple also appealed from the
judgment of the district court in the trial on remand, in
which a jury once again found that Apple infringed the ’504
and ’201 patents. See VirnetX Inc. v. Cisco Sys., Inc., No.
2018-1197 (Fed. Cir.) (“VirnetX II”).
VIRNETX INC. v. APPLE INC. 3
not sustained its burden of proving the invalidity
of any patent claim in suit . . . , an inter partes reex-
amination requested by that party or its privies on
the basis of [issues which that party or its privies
raised or could have raised in such civil action] may
not thereafter be maintained by the Office . . . .”
35 U.S.C. § 317(b) (2006).
In this appeal, we are required to determine whether
our prior decision that affirmed the jury’s finding of no in-
validity is a “final decision” under § 317(b), such that reex-
amination of the two patents is barred.
II.
The majority relies on this court’s decision in Fairchild
(Taiwan) Corp. v. Power Integrations, Inc. to hold that “‘a
final decision’ triggers estoppel when the invalidity chal-
lenge is decided on appeal and the time for petitioning for
certiorari has passed.” Maj. Op. 17; see also id. at 10–11
(citing 854 F.3d 1364, 1365–66 (Fed. Cir. 2017)). I agree
with this formulation of the law, but disagree that Apple’s
time for petitioning for certiorari on the issue of invalidity
has passed.
The majority interprets Fairchild to mean that the ap-
pellate process terminates once this court issues a decision
on any issue and an appeal is not immediately taken. That
is not what we held in Fairchild. Rather, we held that
§ 317(b)’s “restriction applies when ‘all appeals have termi-
nated.’” Fairchild, 854 F.3d at 1365 (quoting Bettcher In-
dus., Inc. v. Bunzl USA, Inc., 661 F.3d 629, 646 (Fed. Cir.
2011)). We did not hold “terminate” to mean upon the is-
suance of our opinion. Nor did we hold that a party is im-
mediately obligated to petition for certiorari once this court
resolves an issue of invalidity where other issues involving
the same patent remain undecided. We did not consider in
Fairchild the finality issue that is before the court in this
case.
4 VIRNETX INC. v. APPLE INC.
Fairchild involved a second appeal in a long-running
dispute between Power Integrations and Fairchild. In the
first appeal of that litigation, we affirmed the jury’s finding
of no invalidity and found in favor of Power Integrations on
infringement. Power Integrations, Inc. v. Fairchild Semi-
conductor Int’l, Inc., 843 F.3d 1315, 1342–45 (Fed. Cir.
2016). We remanded only a cross-appeal by Fairchild that
related to a wholly different patent. Id. at 1345. Power
Integrations did not appeal the court’s favorable ruling on
infringement because it prevailed on that issue. See Kalka
v. Hawk, 215 F.3d 90, 96 n.9 (D.C. Cir. 2000) (cited in Pear-
son v. Callahan, 555 U.S. 223, 240 (2009)) (explaining that
“[n]ormally, a party may not appeal from a favorable judg-
ment” and that the Supreme Court “has apparently never
granted the certiorari petition of a party who prevailed in
the appellate court”); see also Bunting v. Mellen, 541 U.S.
1019, 1023 (2004) (Scalia, J., dissenting from denial of cer-
tiorari) (“[O]ur practice reflects a ‘settled refusal’ to enter-
tain an appeal by a party on an issue as to which he
prevailed.”).
Power Integrations’ decision not to petition for certio-
rari all but foreclosed the possibility that the invalidity is-
sue could be subject to potential future review by the
Supreme Court. 2 Stated differently, once Power
2 The Power Integrations case is still proceeding at
the district court on remand. See Power Integrations, Inc.
v. Fairchild Semiconductor Int’l, Inc., No. 1:08-cv-00309-
LPS (D. Del.). Yet the theoretical possibility that Power
Integrations would appeal its unfavorable invalidity ruling
was not even argued to this court in Fairchild. See Power
Integrations’ Opposition to Fairchild’s Motion to Remand
at 2–3, Fairchild, 854 F.3d 1364 (No. 17-1002); see also
Fairchild (Taiwan) Corporation’s Reply in Support of its
Motion to Remand at 2, Fairchild, 854 F.3d 1364 (No. 17-
VIRNETX INC. v. APPLE INC. 5
Integrations prevailed on infringement, the case against it
was concluded because the only issues remaining pertained
to a cross-appeal involving a different patent. Hence, all of
its appeals terminated at that point. 3 That is not the case
here.
In VirnetX I, this court vacated the jury’s finding of in-
fringement and remanded for a new trial on damages and
infringement under the correct claim construction. Vir-
netX I, 767 F.3d at 1314. There is no dispute that at that
point, Apple clearly could have petitioned for a writ of cer-
tiorari on invalidity. That Apple chose not to appeal is rea-
sonable given the potential for the outcome on remand to
drive its decision whether to petition to the Supreme Court
1002) (arguing only that a petition for certiorari is not an
“appeal” for purposes of § 317(b)).
3 The majority asserts that the case against Power
Integrations did not conclude at this point because the in-
validity issue was separate from the infringement issue,
and arose as a counterclaim by Power Integrations for de-
claratory judgment against Fairchild. Maj. Op. 13–14.
This is incorrect. Power Integrations raised invalidity of
the relevant patent as both an affirmative defense to in-
fringement and as a counterclaim. See Plaintiff’s Fourth
Amended Answer and Counterclaims at 10, 23, Power In-
tegrations, No. 1:08-cv-00309 (D. Del. July 7, 2011), ECF
No. 409. Regardless of the procedural posture of the inva-
lidity issue, the majority does not dispute that the remand
in Power Integrations concerned only issues not related to
the patent at issue in Fairchild. Power Integrations had
no incentive to pursue an appeal on invalidity, because it
no longer faced the risk of being found to infringe. The ma-
jority correctly acknowledges the impropriety of inferring
the subjective intent of litigants in petitioning for certio-
rari. Maj. Op. 14. That litigation decision should not be
dictated by this court, as we have done in this case.
6 VIRNETX INC. v. APPLE INC.
at all. This is because, had Apple won on infringement on
remand, there would then have been no reason for Apple to
appeal that decision or the decision on invalidity.
Apple, however, lost on infringement on remand. Vir-
netX Inc. v. Apple Inc., 324 F. Supp. 3d 836, 844 (E.D. Tex.
2017). We affirmed the jury on appeal. VirnetX II, 748
F. App’x 332 (Fed. Cir. 2019). Now, as the majority recog-
nizes, Apple has a basis on which to petition for certiorari
to the Supreme Court on both infringement and invalidity.
Thus, unlike in Fairchild, where there was no suggestion
that “any unresolved issue on remand would have any ef-
fect on the now-final patent validity determinations,” 854
F.3d at 1366, the outcome on remand from VirnetX I di-
rectly affects Apple’s decision whether to appeal the inva-
lidity issue.
Indeed, in this case the issues on remand (infringement
and damages) involved the same patent the jury found, and
we affirmed, to be not invalid. But in Fairchild, the re-
mand concerned a counterclaim unrelated to the patent
claims challenged in the reexamination proceeding, a fact
this court found to be “critical[]” to its conclusion that the
invalidity decision in Power Integrations was final.
Fairchild, 854 F.3d at 1365; see also Power Integrations,
843 F.3d at 1345 (remanding only with respect to patents
that were not at issue in the reexamination request on ap-
peal in Fairchild). By contrast, this court’s remand in Vir-
netX I specifically concerned the same claims we affirmed
as not invalid and that were at issue in Apple’s reexamina-
tion proceedings, a fact that the majority recognizes. Vir-
netX I, 767 F.3d at 1313–14; Maj. Op. 12. This means that
Fairchild does not apply here as the majority asserts be-
cause the circumstances underlying the Fairchild decision
on finality are not the same as the circumstances in this
case.
Apple’s decision to delay its petition for certiorari to the
Supreme Court until resolution of the new trial on
VIRNETX INC. v. APPLE INC. 7
infringement was reasonable because Apple can now ap-
peal the issues of infringement and invalidity together.
Whether Apple’s decision was based on litigation strategy
or a desire to conserve resources is not at issue. This court
should not dictate to Apple when or whether it should ap-
peal. A party should be free to develop its litigation strat-
egy within the bounds of the law without this court’s
interference, and nothing in Fairchild suggests otherwise.
To the extent that Apple decided to delay its appeal until
the outcome of its trial on remand, that decision was both
reasonable and consistent with the law and principles of
judicial economy.
III.
The majority’s interpretation of Fairchild is at odds
with this court’s decisions in Bettcher Industries, Inc. v.
Bunzl USA, Inc., 661 F.3d 629 (Fed. Cir. 2011) and Frese-
nius USA, Inc. v. Baxter International, Inc., 721 F.3d 1330
(Fed. Cir. 2013).
In Bettcher, we stated that § 317(b) “prevents further
reexamination proceedings once parallel federal court pro-
ceedings have reached their resolution.” Bettcher, 661 F.3d
at 646. In other words, § 317(b) “attaches only after there
has been a final resolution [of the invalidity issue] . . . in
federal court,” and is not triggered “if there remains any
time for an appeal.” Id. (second portion quoting Manual of
Patent Examining Procedure § 2686.04). The court further
explained in Bettcher that the legislative history “con-
firm[s] that § 317(b) applies [only] ‘after any appeals.’” Id.
(quoting 145 Cong. Rec. 29,276 (Nov. 9, 1999); 145 Cong.
Rec. 29,973 (Nov. 17, 1999)). The majority’s decision that
Apple’s reexaminations are barred by § 317(b) is
8 VIRNETX INC. v. APPLE INC.
inconsistent with Bettcher because time remains for Apple
to file a petition for a writ of certiorari. 4
The majority’s interpretation of Fairchild is also incon-
sistent with Fresenius. This court stated in Fresenius that
a decision is not final if it “leaves open the question of dam-
ages or other remedies.” Fresenius, 721 F.3d at 1341–42
(citing 18A Charles A. Wright, Arthur R. Miller, & Edward
H. Cooper, Federal Practice and Procedure § 4432 (2d ed.
2002)); see also id. at 1343 (“[A] decision finding a patent
not invalid but remanding for further damages proceedings
is not a final judgment.” (citing Mendenhall v. Barber-
Greene Co., 26 F.3d 1573, 1576–77 (Fed. Cir. 1994), as cor-
rected on reh’g (Sept. 14, 1994))). This court determined
that there was no finality because the case was remanded
to reconsider royalties and injunctive relief. Id. at 1333.
In deciding Fresenius, this court relied on the Supreme
Court’s decision in Simmons Co. v. Grier Brothers Co., 258
U.S. 82 (1922). We explained that in Simmons, the Su-
preme Court concluded that there was no finality with re-
spect to the issue of infringement because “even though
there had been an appellate decision entirely resolving the
patent infringement claims, . . . there had not yet been a
4 The majority distinguishes Bettcher on the grounds
that it dealt with estoppel under pre-AIA 35 U.S.C. § 315(c)
and only addressed appellate review by the Board and this
court—not the Supreme Court. Maj. Op. 18–19 & n.10.
But Bettcher expressly construed the meaning of “final de-
cision” as used in § 317(b) in the context of all federal
courts, and that construction was part of Bettcher’s hold-
ing. See Fairchild, 854 F.3d at 1365. Although Bettcher
did not specifically mention the Supreme Court, it held
that § 317(b) “applies only when . . . all appeals have ter-
minated.” Bettcher, 661 F.3d at 646 (emphasis added).
Nothing in Bettcher suggests that its holding was limited
solely to appeals to the Board and this court.
VIRNETX INC. v. APPLE INC. 9
final judgment on the unfair competition claims [and an
accounting of damages],” and therefore “the Supreme
Court’s intervening decision [in a separate case] was bind-
ing as to the infringement claims” because “the appellate
mandate had not ended the case.” Fresenius, 721 F.3d at
1342–43 (citing Simmons, 258 U.S. at 84–91) (emphasis
added); see also id. (“Although the interlocutory decision of
[the trial court] on the question of validity and infringe-
ment was appealable, . . . the decision was not final until
the conclusion of the accounting. Hence the court did not
lack power at any time prior to entry of its final judgment
at the close of the accounting to reconsider any portion of
its decision and reopen any part of the case.” (quoting Mar-
coni Wireless Tel. Co. v. United States, 320 U.S. 1, 47–48
(1943)). As in Simmons and Marconi, even though this
court affirmed the jury’s finding of no invalidity in VirnetX
I, that decision is not final because the case was remanded
for a new trial on infringement and damages.
IV.
Other Supreme Court precedent supports the conclu-
sion that Apple has not exhausted its appellate rights. Alt-
hough Apple did not petition for certiorari on the issue of
invalidity after its first appeal, Supreme Court precedent
establishes that it can do so now. See Major League Base-
ball Players Ass’n v. Garvey, 532 U.S. 504, 508 n.1 (2001)
(per curiam) (“[W]e have authority to consider questions
determined in earlier stages of the litigation where certio-
rari is sought from the most recent of the judgments of the
Court of Appeals.”); Bhd. of Locomotive Firemen & Engine-
men v. Bangor & Aroostook R.R. Co., 389 U.S. 327, 328
(1967) (“[B]ecause the Court of Appeals remanded the case,
it is not yet ripe for review by this Court.”); Mercer v. The-
riot, 377 U.S. 152, 153–54 (1964) (per curiam) (“[I]t is set-
tled that we may consider questions raised on the first
appeal, as well as ‘those that were before the court of ap-
peals upon the second appeal.’” (quoting Hamilton–Brown
Shoe Co. v. Wolf Bros. & Co., 240 U.S. 251, 257 (1916))). In
10 VIRNETX INC. v. APPLE INC.
Reece v. Georgia, the Supreme Court explained that it has
“jurisdiction to consider all of the substantial federal ques-
tions determined in the earlier stages of the litigation.” 350
U.S. 85, 87 (1955) (citing Urie v. Thompson, 337 U.S. 163,
172–73 (1949)). This is true even if certiorari was not
sought until after a second appeal. Id. The law-of-the-case
doctrine does not bar Supreme Court review because “[a]
petition for writ of certiorari can expose the entire case to
review.” Christianson v. Colt Indus. Operating Corp., 486
U.S. 800, 817 (1988) (citing Panama R. Co. v. Napier Ship-
ping Co., 166 U.S. 280, 283–284 (1897)).
The majority asserts that § 317(b) concerns only “the
finality of a particular issue, rather than finality of the en-
tire case.” Maj. Op. 17 n.8; see also id. at 20–21. Yet, the
majority recognizes that “the Supreme Court may one day
reconsider the invalidity issue” decided in VirnetX I. Maj.
Op. 17. 5 Thus, even under the majority’s reading of the
statute, finality is lacking with respect to the invalidity is-
sue in this case.
The majority also suggests that Supreme Court review
does not qualify as an “appeal” for purposes of § 317(b)’s
estoppel provision because there is no right to Supreme
Court review. Maj. Op. 19 n.10. This suggestion is incon-
sistent with Article III of the U.S. Constitution, which
states that, aside from cases implicating the Supreme
Court’s original jurisdiction, the Supreme Court “shall
have appellate Jurisdiction, both as to Law and Fact.” U.S.
Const. art. III. In any case, Apple has a right to petition for
a writ of certiorari. See Durham v. United States, 401 U.S.
481, 483 n.* (1971), overruled on other grounds by Dove v.
5 In responding to the above line of Supreme Court
cases, the majority again confirms that the Court can still
review the invalidity issue in VirnetX I, thus further un-
dercutting its insistence that the issue was finally decided
in that case. See Maj. Op. 15.
VIRNETX INC. v. APPLE INC. 11
United States, 423 U.S. 325 (1976) (noting the distinction
that “appeals are a matter of right while decisions on cer-
tiorari petitions are wholly discretionary,” but explaining
that “Congress, however, has given a right to petition for
certiorari” (emphasis added)). In my view, by determining
that this court’s affirmance of no invalidity in VirnetX I ter-
minated Apple’s right to seek certiorari, the majority’s con-
clusion intrudes on the Supreme Court’s constitutional
prerogative whether to take up the invalidity issue.
V.
The majority’s decision also intrudes on long estab-
lished principles of judicial economy because it fosters
piecemeal litigation. Under the majority’s approach, once
this court decides an issue of invalidity on appeal, a party
is required to immediately petition for certiorari to the Su-
preme Court—regardless of the status of the other issues
in the case. This approach stands in stark contrast to “the
general judicial bias against piecemeal litigation.” Arizona
v. San Carlos Apache Tribe of Arizona, 463 U.S. 545, 570
(1983); see also Sears, Roebuck & Co. v. Mackey, 351 U.S.
427, 439 (1956) (noting the courts’ longstanding “hostility
toward piecemeal appeals”); Panama, 166 U.S. at 284
(“[A]s was recently said in the case of The Conqueror, 17
Sup. Ct. 510, [the writ of certiorari] is and generally should
be issued only after a final decree.”).
In McLish v. Roff, the Supreme Court explained that
“[f]rom the very foundation of our judicial system the object
and policy . . . have been to save the expense and delays of
repeated appeals in the same suit, and to have the whole
case and every matter in controversy in it decided in a sin-
gle appeal.” 141 U.S. 661, 665 (1891).
The majority contends that to hold that § 317(b) does
not apply in this case will itself lead to duplicative litiga-
tion because waiting “until any prospect of future Supreme
Court review is eliminated” will cause § 317(b) “estoppel
[to] rarely apply.” Maj. Op. 17 (internal citation and
12 VIRNETX INC. v. APPLE INC.
quotation marks omitted). But not every appeal that
reaches this court results in a remand, and even if that
were the case, estoppel would still apply once all appeals
are terminated. It is not rare that the Supreme Court de-
nies a party’s last petition for certiorari and litigation con-
cludes. But that step is for the Supreme Court to take—
not this court.