The Federal Circuit recently decided a reexamination case, VirnetX v. Apple and Cisco, that addressed two issues: (1) was requester estopped from maintaining its reexams under the pre-AIA version of 35 U.S.C. § 317(b) (2006) and (2) whether the ’504 and ’211 patents are invalid. Today’s newsletter addresses the first issue – whether requester was estopped from filing an inter partes reexamination because they lost a similar issue in district court – all the way through Supreme Court cert denial and remand.

Requester argued “the decision is only final when there is no potential that the Supreme Court might someday examine the invalidity issue during a second appeal.” Patent Owner contended there is a “‘final decision’ on a party’s attempt to prove invalidity after the party fails to petition for certiorari within the 90-day period.” The Court held that “[t]wo reasons compel the conclusion that there has been a final decision on validity in this case.” The majority discussed why the similarities between the facts here and with their Fairchild (Taiwan) Corp. v. Power Integrations, Inc., 854 F.3d 1364 (Fed. Cir. 2017) decision, among others, compelled termination of the reexaminations, while distinguishing the dissents arguments.

After much analysis of the issues raised by requester and in the dissent, the majority remanded the reexaminations with instructions to terminate with respect to specific claims and patents based on estoppel of the reexamination requester.

This article appeared in the August 2019 issue of PTAB Strategies and Insights. To view our past issues, as well as other firm newsletters, please click here.