Case: 17-2593 Document: 65 Page: 1 Filed: 04/04/2022
NOTE: This order is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
VIRNETX INC.,
Appellant
v.
ANDREW HIRSHFELD, Performing the Functions
and Duties of the Under Secretary of Commerce for
Intellectual Property and Director of the United
States Patent and Trademark Office,
Intervenor
______________________
2017-2593
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2016-
00693.
-------------------------------------------------
VIRNETX INC.,
Appellant
v.
ANDREW HIRSHFELD, Performing the Functions
and Duties of the Under Secretary of Commerce for
Intellectual Property and Director of the United
States Patent and Trademark Office,
Intervenor
Case: 17-2593 Document: 65 Page: 2 Filed: 04/04/2022
2 VIRNETX INC. v. HIRSHFELD
______________________
2017-2594
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2016-
00957.
______________________
Before PROST, REYNA, and CHEN, Circuit Judges.
PROST, Circuit Judge.
ORDER
In response to this court’s September 16, 2021 and Feb-
ruary 15, 2022 orders, the parties inform the court how
they believe these appeals should proceed.
In Appeal No. 2017-2594, VirnetX Inc. challenges the
Patent Trial and Appeal Board’s June 12, 2017 final writ-
ten decision concerning claims of
U.S. Patent No.
7,921,211. On August 1, 2019, this court issued its decision
in VirnetX Inc. v. Apple Inc.,
931 F.3d 1363, 1380 (Fed. Cir.
2019), affirming separate Board decisions finding the same
claims of the patent unpatentable. In light of that decision,
the parties agree that Appeal No. 2017-2594 is moot and
the underlying Board decision should be vacated.
In Appeal No. 2017-2593, VirnetX informs the court
that its request for Director review was denied and it has
filed an amended notice of appeal. VirnetX further pro-
poses a briefing schedule to which the intervenor does not
object.
Upon consideration thereof,
IT IS ORDERED THAT:
(1) The above-captioned appeals are deconsolidated.
The revised official captions are reflected above.
Case: 17-2593 Document: 65 Page: 3 Filed: 04/04/2022
VIRNETX INC. v. HIRSHFELD 3
(2) The June 12, 2017 final written decision of the Pa-
tent Trial and Appeal Board in IPR2016-00957 is vacated,
and Appeal No. 2017-2594 is remanded with instructions
to dismiss.
(3) Each side to bear its own costs as to Appeal No.
2017-2594.
(4) No additional docketing fee is required for the
amended notice of appeal in Appeal No. 2017-2593.
(5) The revised certified list in Appeal No. 2017-2593
is due no later than April 19, 2022. VirnetX’s opening brief
is due within 60 days of the date of filing of the certified
list.
FOR THE COURT
April 4, 2022 /s/ Peter R. Marksteiner
Date Peter R. Marksteiner
Clerk of Court
