Virnetx Inc. v. Apple Inc.
665 F. App'x 880
| Fed. Cir. | 2016Background
- VirnetX owns U.S. Patent No. 8,504,697, which claims a method/system where a proxy DNS intercepts a domain-name–based lookup, determines whether a target is "available" for a secure communications service, and, if so, initiates a VPN link that hides the target IP address.
- Apple filed inter partes review petitions challenging claims 1–11, 14–25, and 28–30; the PTAB instituted review and issued final written decisions finding those claims anticipated or obvious (VirnetX I & II).
- The Federal Circuit considered VirnetX’s appeal from the PTAB’s VirnetX II decision and affirmed on the grounds addressed in that PTAB decision.
- Key disputed claim terms included "secure communication link," "virtual private network communication link," and "determining ... whether the second network device is available." The court declined to construe most disputed terms because their construction did not affect validity review or were waived.
- The PTAB found anticipation primarily in U.S. Patent No. 5,898,830 (Wesinger) and obviousness in combinations including Wesinger and RFC 2543; the court reviewed those findings for substantial evidence and legal conclusions de novo.
Issues
| Issue | VirnetX’s Argument | Apple’s Argument | Held |
|---|---|---|---|
| Whether PTAB misconstructed claim terms ("available", "secure communication link", "VPN communication link") | PTAB misconstrued limitations and that correct constructions would avoid invalidity | PTAB constructions were acceptable or unnecessary to resolve invalidity | Court declined to construe terms that would not change outcome and held VirnetX waived some arguments; constructions not required to affirm invalidity |
| Whether PTAB may make factual findings without expert testimony in complex tech cases | PTAB erred by reaching factual findings without expert support; technology is complex so expert evidence was essential | No rule requires expert testimony; PTAB may rely on its expertise and record evidence; expert testimony is weighed but not mandatory | PTAB may make factual findings absent expert testimony; substantial evidence supported its findings here; rejecting a requirement for per se expert evidence |
| Whether Wesinger anticipates claim 1 ("determining ... whether ... available") | Wesinger doesn’t disclose making the availability determination in response to a DNS/domain-name lookup and does not disclose "available" as claimed | Wesinger’s "allowed" and its connection processing disclose "available"; its connection request provides an IP based on domain name, so limitation is met | Substantial evidence supports PTAB that Wesinger discloses the limitation; anticipation affirmed |
| Whether Wesinger anticipates dependent claims requiring mobile/notebook devices | Wesinger discloses only "computer," not specifically "notebook" | A genus disclosure of "computer" encompassed notebook computers for a PHOSITA at the time | Substantial evidence supports that "computer" would be understood to include notebook computers in 1996; anticipation affirmed |
Key Cases Cited
- Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064 (Fed. Cir. 2015) (PTAB need not always rely on expert testimony; members’ expertise can aid reading prior art)
- Synopsys, Inc. v. Mentor Graphics Corp., 814 F.3d 1309 (Fed. Cir. 2016) (whether expert testimony is essential depends on the complexity of the technology)
- In re Gleave, 560 F.3d 1331 (Fed. Cir. 2009) (anticipation does not require an ipsissimis verbis match)
- Spansion, Inc. v. Int’l Trade Comm’n, 629 F.3d 1331 (Fed. Cir. 2010) (anticipation requires the four corners of a reference to describe every claim element)
- Brand v. Miller, 487 F.3d 862 (Fed. Cir. 2007) (PTAB/tribunal may not base findings on its expertise in lieu of record evidence)
- Wyers v. Master Lock Co., 616 F.3d 1231 (Fed. Cir. 2010) (expert testimony can be essential for matters beyond lay comprehension)