VirnetX loses at CAFC

The outcome:



VirnetX Inc. (“VirnetX”) appeals from two final written
decisions of the Patent Trial and Appeal Board
(“Board”) finding that Apple Inc. (“Apple”) had demonstrated
by a preponderance of the evidence that claims 1–
11, 14–25, and 28–30 of U.S. Patent No. 8,504,696 (“the
’696 patent”) were unpatentable as obvious. VirnetX Inc.
v. Apple Inc., No. IPR2016-00331 (P.T.A.B. June 22, 2017)
(“331 Board Decision”); VirnetX Inc. v. Apple Inc., No.
IPR2016-00332 (P.T.A.B. June 22, 2017) (“332 Board
Decision”). Because VirnetX is collaterally estopped from
relitigating the threshold issue of whether prior art
reference RFC 24011 was a printed publication and because
VirnetX did not preserve the only remaining issue
of whether inter partes review procedures apply retroactively
to patents that were filed before Congress enacted
the America Invents Act (“AIA”), we affirm.



AND



[VirnetX] attempts to justify this failure by arguing
that our precedent prior to Oil States generally upheld
the constitutionality of inter partes review proceedings
and thus, foreclosed the argument. But we have never
decided this issue, and, even if we had, VirnetX never
sought to provide supplemental briefing or to otherwise
develop this argument following the Supreme Court’s
decision in Oil States. Rather, VirnetX insists it preserved
this issue by way of a single, generic paragraph. It
did so only after Apple filed its notice of supplemental
authority identifying our Rule 36 judgment in VirnetX I,
which VirnetX acknowledges significantly weakens an
otherwise dispositive issue in this appeal