VirnetX Faces Follow-on IPR Petition from a Different Petitioner After Settling Previously Instituted IPR

04 March 2016 PTAB Trial Insights Blog

In IPR2014-00614, Microsoft filed a petition for IPR against US Patent No. 7,418,504 (“the ‘504 patent) owned by VirnetX, which was instituted based upon anticipation grounds over Kiuchi (see institution decision).  This IPR later settled, and the PTAB granted termination before a final written decision.  Yesterday, a new entity (Black Swamp IP, LLC) filed a petition for IPR against the ‘504 patent, raising the same grounds of anticipation based on Kiuchi used by Microsoft in the earlier instituted IPR.  This latest development highlights several strategic considerations for patent owners seeking to enforce their patents in the post-AIA world and defendants seeking to avoid them.

Before the latest petitions by Microsoft and Black Swamp IP, LLC, several prior petitions for IPR were filed against the VirnetX ‘504 patent by various entities with varying outcomes:

(1) IPR2013-00377 by Petitioner New Bay Capital, LLC – terminated
prior to institution;

(2) IPR2013-00393 and IPR2013-00394 by Petitioner Apple
Inc. – not instituted;

(3) IPR2014-0017 6 and IPR2014-00177 by Petitioner RPX
Corp. – not instituted;

( 4) IPR2014-00612 by Petitioner Microsoft Corp. – not
instituted;

(5) IPR2015-00188 and IPR2015-00189 by Apple Inc. – not
instituted.

Also, other VirnetX patents are currently involved in parallel litigation and IPR proceedings.  See “High Stakes Race Between Apple and VirnetX:  Will PTAB Trump The Texas Jury’s Award of $625M?

Enforcing A Patent Against Multiple Defendants May Encourage Multiple IPR Petitions

The more litigation there is, the more that individual defendants may seek to file IPR petitions, as did Microsoft and Apple.  Also, the value of the potential damages awards appears to have attracted investor interest, such as the IPR petitions filed by New Bay Capital LLC and Black Swamp IP, LLC.  After several denials, Microsoft found a reference that led to an institution decision.

Settling An IPR May Not Prevent Independent Petitioners From Filing On The Same Grounds

While the PTAB has discretion to deny an IPR petition based on arguments previously presented to it, a new petition from an independent petitioner, even if it presents identical grounds, would not necessarily be denied on this basis.  In fact, the PTAB has instituted in some cases even where the same petitioner has filed follow-on petitions after an earlier denial.  See “Estoppel Versus Discretion:  How is the PTAB Deciding Multiple Petitions Against the Same Patent?

This blog is made available by Foley & Lardner LLP (“Foley” or “the Firm”) for informational purposes only. It is not meant to convey the Firm’s legal position on behalf of any client, nor is it intended to convey specific legal advice. Any opinions expressed in this article do not necessarily reflect the views of Foley & Lardner LLP, its partners, or its clients. Accordingly, do not act upon this information without seeking counsel from a licensed attorney. This blog is not intended to create, and receipt of it does not constitute, an attorney-client relationship. Communicating with Foley through this website by email, blog post, or otherwise, does not create an attorney-client relationship for any legal matter. Therefore, any communication or material you transmit to Foley through this blog, whether by email, blog post or any other manner, will not be treated as confidential or proprietary. The information on this blog is published “AS IS” and is not guaranteed to be complete, accurate, and or up-to-date. Foley makes no representations or warranties of any kind, express or implied, as to the operation or content of the site. Foley expressly disclaims all other guarantees, warranties, conditions and representations of any kind, either express or implied, whether arising under any statute, law, commercial use or otherwise, including implied warranties of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Foley or any of its partners, officers, employees, agents or affiliates be liable, directly or indirectly, under any theory of law (contract, tort, negligence or otherwise), to you or anyone else, for any claims, losses or damages, direct, indirect special, incidental, punitive or consequential, resulting from or occasioned by the creation, use of or reliance on this site (including information and other content) or any third party websites or the information, resources or material accessed through any such websites. In some jurisdictions, the contents of this blog may be considered Attorney Advertising. If applicable, please note that prior results do not guarantee a similar outcome. Photographs are for dramatization purposes only and may include models. Likenesses do not necessarily imply current client, partnership or employee status.

Related Services