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.

virnetx apple
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

oneMadRssn Avatar
33 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)
coumerelli Avatar
33 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)
ruslan120 Avatar
33 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)
sw1tcher Avatar
33 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)
I7guy Avatar
33 months ago
Pay up and let’s get on with life.
Score: 4 Votes (Like | Disagree)
Carnegie Avatar
33 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)

Popular Stories

cook sept 2020 event

Gurman: Apple Preparing Pre-Recorded iPhone 14 and Apple Watch Series 8 Event

Sunday August 7, 2022 6:13 am PDT by
Apple has "started to record" its virtual September event, where it's expected to announce the upcoming iPhone 14 lineup, the Apple Watch Series 8, and a new "rugged" Apple Watch model, according to Bloomberg's Mark Gurman. Writing in his latest Power On newsletter, Gurman says the event, which is expected to take place in the early part of September, is already under production, implying...
iPhone 14 Lineup Feature Purple

Color Options for All iPhone 14 Models: Everything We Know

Monday August 8, 2022 3:59 am PDT by
The iPhone 14 and iPhone 14 Pro models are rumored to be available in a refreshed range of color options, including an all-new purple color. Most expectations about the iPhone 14 lineup's color options come from an unverified post on Chinese social media site Weibo earlier this year. Overall, the iPhone 14 and iPhone 14 Pro's selection of color options could look fairly similar to those of the ...
ios 16 beta 5 battery percent

iOS 16 Beta 5: Battery Percentage Now Displayed in iPhone Status Bar

Monday August 8, 2022 10:43 am PDT by
With the fifth beta of iOS 16, Apple has updated the battery icon on iPhones with Face ID to display the specific battery percentage rather than just a visual representation of battery level. The new battery indicator is available on iPhone 12 and iPhone 13 models, with the exception of the 5.4-inch iPhone 12/13 mini. It is also available on the iPhone 11 Pro and Pro Max, XS and XS Max, and...
iOS 16 battery percentage

Apple Limiting iOS 16 Beta 5 Battery Percentage Display to Select iPhones: Here Are the Supported Devices

Tuesday August 9, 2022 2:51 am PDT by
Apple this week brought back one of the most highly requested features from iOS users since the launch of the iPhone X in 2017: the ability to see your battery percentage directly in the status bar. Ever since the launch of the iPhone X with the notch, Apple has not allowed users to show their battery percentage directly in the status bar, forcing them to swipe down into Control Center to...
ios 16 battery indicator 2

Everything New in iOS 16 Beta 5: Battery Percentage in Status Bar, Find My Changes and More

Monday August 8, 2022 12:53 pm PDT by
Apple today seeded the fifth beta of iOS 16 to developers for testing purposes, introducing some small but notable changes to the iOS operating system. Subscribe to the MacRumors YouTube channel for more videos. We've rounded up everything new in the fifth beta below. Battery Percentage in Status Bar The battery icon in the status bar now displays the exact battery percent, a feature that ...
iphone 14 pro max camera bump compared lipilipsi 16 9

Bigger iPhone 14 Pro Max Camera Bump Shown Alongside iPhone 13 Pro Max

Monday August 8, 2022 4:33 am PDT by
The camera bump on the upcoming iPhone 14 Pro Max is expected to be the largest rear lens housing Apple has ever installed on its flagship smartphones, and a new photo offers a rare glimpse at just how prominent it is compared to Apple's predecessor device. iPhone 14 Pro Max dummy (left) vs iPhone 13 Pro Max All iPhone 14 models are expected to see upgrades to the Ultra Wide camera on the...
airpods pro black background

Beyond iPhone 14: Five Apple Products Expected to Launch Later This Year

Monday August 8, 2022 9:43 am PDT by
While the iPhone 14 and Apple Watch Series 8 are expected to be announced in September as usual, there are several more Apple products rumored to launch later this year, including new iPad and Mac models and more. Beyond the iPhone and Apple Watch, we've put together a list of five Apple products that are most likely to be unveiled by the end of 2022. Second-Generation AirPods Pro Apple...