Apple Won't Get Rehearing in VirnetX Patent Infringement Battle Dating Back to 2010, Court Rules

Apple will not be able to get a rehearing in its ongoing patent battle with VirnetX to argue that the patents it is accused of infringing are invalid, reports Bloomberg.

The U.S. Court of Appeals for the Federal Circuit today rejected Apple's request to reconsider a November ruling that confirmed Apple infringed on two VirnetX patents.


The patent dispute between VirnetX and Apple dates back to 2010 when VirnetX accused Apple's FaceTime feature of infringing on its intellectual property, and there are multiple lawsuits involved.

In this particular case, VirnetX was awarded $502.6 million in April 2018 after a court ruled that Apple's ‌FaceTime‌, iMessage, and VPN on Demand features infringed on four VirnetX patents related to communications security.

An appeals court later reexamined the ruling and determined that Apple had infringed on two VirnetX patents, but the other two counts were reversed in November 2019 and the $502.6 million award was vacated. The case was sent back to a lower court to determine whether revised damages can be calculated or if there will be a new damages trial, but the ruling was ultimately in favor of VirnetX.

At this time, with Apple's request for a rehearing on patent validity denied, Apple and VirnetX are awaiting details on the new damages Apple will be required to pay.

In a separate case, Apple was ordered to pay $440 million to VirnetX for similar patent infringement issues. Apple appealed that ruling multiple times as well, but an appeals court in January 2019 ruled in VirnetX's favor, leaving Apple responsible for a $440 million patent infringement fee.

Top Rated Comments

(View all)
Avatar
8 months ago

I wish there was a way to get patents on obvious ideas invalidated.

There is. It's called Inter Partes Review ("IPR"). It's a process much cheaper than litigation that allows anyone to ask a special board at the USPTO to take a second look at a patent. Historically, that process has resulted in roughly 75% of patents they look at to be found invalid. Patent owners call them the patent death squad, while defendants usually hail them as cleaning up the system.

Apple tried to IPR these patents and did not succeed. If the patent death squad didn't rule them to be obvious, that should tell you how non-obvious they are.
Score: 13 Votes (Like | Disagree)
Avatar
8 months ago


This is how a rotten patent system works: patent trolls will win every single time.

"every single time" seems like an exaggeration to me. And like I've told my kids a million times, never exaggerate.
Score: 8 Votes (Like | Disagree)
Avatar
8 months ago
Is it guaranteed that they're a patent troll? Inventing new IP and then selling it off or licensing is a valid form of business, especially for colleges and universities.
Score: 6 Votes (Like | Disagree)
Avatar
8 months ago


Is it guaranteed that they're a patent troll?

Ruling not in Apple's favor? Patent troll.

That's how it works around here.
Score: 6 Votes (Like | Disagree)
Avatar
8 months ago
Pay up and let’s get on with life.
Score: 4 Votes (Like | Disagree)
Avatar
8 months ago


There is. It's called Inter Partes Review ("IPR"). It's a process much cheaper than litigation that allows anyone to ask a special board at the USPTO to take a second look at a patent. Historically, that process has resulted in roughly 75% of patents they look at to be found invalid. Patent owners call them the patent death squad, while defendants usually hail them as cleaning up the system.

Apple tried to IPR these patents and did not succeed. If the patent death squad didn't rule them to be obvious, that should tell you how non-obvious they are.

The PTAB did rule that the patents at issue (i.e. relevant claims of those patents) were invalid. It did so not based on them being obvious, but based on them being anticipated by prior art (i.e. Takahiro Kiuchi - The Development of a Secure, Closed HTTP-Based Network on the Internet (1996)).

There were 4 patents which Apple was, in this case, found to have infringed - '211, '504, '135, and '151. The PTAB instituted an IPR against each of those patents. That means that the Board found that there was a reasonable likelihood that the petitioners (Black Swamp for '211 and '504, Mangrove Partners for '135 and '151) would be able to demonstrate invalidity for some of the claims at issue.

The Federal Circuit found that Apple hadn't infringed '211 and '504 - i.e., it found that Apple was entitled to JMOL on the infringement issue because no reasonable jury could, using proper claim constructions, find that Apple infringed the asserted claims of those patents. But, for the record, the PTAB found many claims of those patents invalid as anticipated by Kiuchi.

Regarding '135 and '151, the PTAB also found that the asserted claims from those patents (2 from '135 and 1 from '151) - as well as most of the other claims of those patents - were invalid as anticipated by Kiuchi. The Federal Circuit vacated and remanded those decisions for a number of reasons that I won't get lost in.

However, among other issues, the Federal Circuit left it for the PTAB to consider the obviousness issue with regard to both patents. The PTAB hadn't previously needed to decide on obviousness because it had found anticipation. The Federal Circuit also left it for the PTAB to reconsider the anticipation issue with regard to '135. The PTAB heard arguments in these matters a few weeks ago.

So we don't know whether the claims at issue will ultimately be found, through IPR, to be invalid. But the point is that there's at least some reasonable arguments to be made that they are invalid.

To be clear, that most likely (barring an unlikely review by the Supreme Court) won't help Apple when it comes to the case which is the subject of this thread. Apple hasn't been allowed to make the invalidity arguments that it wanted to because of previous litigation, involving the same patents, between the parties. So even if VirnetX's asserted claims (from '135 and '151) are ultimately invalidated through the IPR process, Apple will likely have to pay damages based on having infringed them. What's left now is to determine how much Apple will have to pay.
Score: 3 Votes (Like | Disagree)

Top Stories

Here's How You Can Download iOS 14 and iPadOS 14 Around the World [It's Out]

Wednesday September 16, 2020 2:36 am PDT by
Apple's official public release of iOS 14 and iPadOS 14 dropped on Wednesday, September 16, just a day after the company released the Golden Master to third-party developers. Also set to be made available to the general public for the first time are watchOS 7 and tvOS 14. Getting Started With iOS 14 Video Click image to watch iOS 14 Getting Started While that's left a lot of developers...

When Will the iPhone 12 Launch? Here's What We Know

Wednesday September 16, 2020 6:12 am PDT by
Yesterday's "Time Flies" Apple event saw the release of the Apple Watch Series 6, Apple Watch SE, iPad 8, and iPad Air 4, but no new iPhone models. Rumors before the event strongly alleged that it would not see the unveiling of new iPhones, with many reports pointing to an October launch. The lack of new iPhone models yesterday seems to confirm that the iPhone 12 lineup will not appear...

Apple Releases iOS 14 and iPadOS 14 With Home Screen Redesign, App Library, Compact UI, Translate App, Scribble Support, App Clips, and More

Wednesday September 16, 2020 12:48 pm PDT by
Apple has released iOS 14 and iPadOS 14, the newest operating system updates designed for the iPhone and iPad. As with all of Apple's software updates, iOS 14 and iPadOS 14 can be downloaded for free. iOS 14 is available on the iPhone 6s and later, while iPadOS 14 is available on the iPad Air 2 and later. The updates are available on all eligible devices over-the-air in the Settings app. To ...

Apple Releases Safari 14 for Mac Ahead of macOS Big Sur Launch

Wednesday September 16, 2020 1:40 pm PDT by
macOS Big Sur didn't launch alongside iOS 14, iPadOS 14, tvOS 14, and watchOS 7 today, with the update coming later this fall, but Apple did release the Safari 14 update for macOS Catalina and macOS Mojave users. Safari 14 brings improved performance, customizable start pages, a Privacy Report to see which cross-site trackers are being blocked, and a new tab bar design that provides tab...

Apple Updates AirPods 2 and AirPods Pro Firmware to Version 3A283

Monday September 14, 2020 11:24 am PDT by
Apple today released new 3A283 firmware updates for the second-generation AirPods and the AirPods Pro. The second-generation AirPods are being updated from the 2D15 firmware they were previously running, while the AirPods Pros are being updated from the 2D27 firmware they had installed previously. Apple does not provide details on what's included in refreshed firmware so we don't know what's ...

iOS 14 Picture in Picture No Longer Working With YouTube's Mobile Website in Safari [Without Premium]

Friday September 18, 2020 12:21 pm PDT by
Apple in iOS 14 added Picture in Picture to the iPhone, a feature designed to let you watch a video in a small screen on your device while you continue to do other things on the phone. When Picture in Picture was working with YouTube The YouTube app doesn't support Picture in Picture, but up until yesterday there was a functional workaround that allowed videos from YouTube.com to be watched...

Hands-On With the New Apple Watch Series 6 and Apple Watch SE

Friday September 18, 2020 1:19 pm PDT by
Today's the official launch date for the Apple Watch Series 6 and the Apple Watch SE, both of which Apple announced on Tuesday. We picked up a couple of the new models and thought we'd give them a quick look for MacRumors readers thinking of ordering a new watch. Apple Watch Series 6 & Apple Watch SE Hands-On! When it comes to design, both the $399 Series 6 and the $279 SE look just like...

iOS 14.2 Beta Adds New Shazam Music Recognition Feature for Control Center

Thursday September 17, 2020 3:36 pm PDT by
Apple today released the first beta of iOS 14.2 to developers for testing purposes, and the new update introduces a Music Recognition control for the Control Center. The new feature lets you discover music playing around you and it recognizes the music playing with in apps, even when you're wearing AirPods. Songs pop up as notifications, and you can tap to listen in Apple Music....

8 Third-Party Home Screen Widgets That You Can Try Out Now on iOS 14

Wednesday August 5, 2020 12:56 pm PDT by
One of the biggest new features of iOS 14 is Home Screen widgets, which provide information from apps at a glance. The widgets can be pinned to the Home Screen in various spots and sizes, allowing for many different layouts. When the iOS 14 beta was first released in June, widgets were limited to Apple's own apps like Calendar and Weather, but several third-party developers have begun to test ...

Apple Releases watchOS 7 With New Watch Faces, Family Setup, Sleep Tracking, Handwashing Help and More

Wednesday September 16, 2020 12:47 pm PDT by
Apple today released watchOS 7, the newest version of the watchOS operating system designed to run on modern Apple Watch models. The watchOS 7 update comes after several months of beta testing. ‌watchOS 7‌ can be downloaded for free through the dedicated Apple Watch app on the iPhone by going to General > Software Update. To install the new software, the Apple Watch needs to have at...