{"id":2320,"date":"2018-12-10T11:58:00","date_gmt":"2018-12-10T16:58:00","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=2320"},"modified":"2018-12-16T20:36:00","modified_gmt":"2018-12-17T01:36:00","slug":"collateral-estoppel-exposes-the-failure-to-have-legitimate-plan-b","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=2320","title":{"rendered":"Collateral Estoppel Exposes the Failure to have Legitimate Plan B"},"content":{"rendered":"\n

In Virtnex Inc. v. Apple, Inc.<\/a>, [2017-2490, 2017-2494] (December 10, 2018) the Federal Circuit affirmed the PTAB that claims 1\u201311, 14\u201325, and 28\u201330 of U.S. Patent No. 8,504,696 were unpatentable as obvious., noting that\u00a0VirnetX was collaterally estopped from\u00a0relitigating the threshold issue of whether prior art\u00a0reference was a printed publication and because\u00a0VirnetX did not preserve the only remaining issue\u00a0of whether inter partes<\/em> review procedures apply retroactively\u00a0to patents that were filed before Congress enacted\u00a0the America Invents Act.<\/p>\n\n\n\n

During the pendency of VirnetX\u2019s appeal, the Federal Circuit summarily affirmed seven final written decisions between VirnetX Inc. and Apple in which the Board found that RFC 2401 was a printed publication.\u00a0 The Federal Circuit said that Rule 36 summary dispositions could be the basis collateral estoppel, and that the only issue was whether the printed publication issue was necessary or essential to the judgment in the prior cases.\u00a0 The Federal Circuit held that it was.<\/p>\n\n\n\n

VirnetX also argued that it preserved in its opening brief the issue of whether inter partes review procedures\u00a0apply retroactively to patents that were filed before\u00a0Congress enacted the AIA, pointing to a single paragraph in its Opening Brief, filed prior to the Supreme Court\u2019s\u00a0decision in Oil States.\u00a0 <\/em>The Federal Circuit said that this paragraph raised the specific question later\u00a0decided in Oil States<\/em>, and\u00a0under\u00a0a very generous reading, the paragraph also arguably\u00a0raises a general challenge under the Seventh Amendment, but it\u00a0in no way provides any arguments\u00a0specifically preserving the retroactivity issue.<\/p>\n\n\n\n

The Federal Circuit concluded that VirnetX did not preserve\u00a0the issue of whether inter partes<\/em> review procedures apply\u00a0retroactively to patents that were filed before Congress\u00a0enacted the AIA and that, therefore, the conclusion that\u00a0VirnetX was collaterally estopped from raising the printed
publication issue resolved all other issues in the appeal.\u00a0 The Federal Circuit affirmed.<\/p>\n\n\n\n

The lesson, of course, is to correctly predict the future and simply preserve the issues you will need.\u00a0\u00a0Virtnex can hardly be faulted for not preserving the issue, when they had a more substantive issue before it, buy it always pays to have a legitimate Plan B.<\/p>\n","protected":false},"excerpt":{"rendered":"

In Virtnex Inc. v. Apple, Inc., [2017-2490, 2017-2494] (December 10, 2018) the Federal Circuit affirmed the PTAB that claims 1\u201311, 14\u201325, and 28\u201330 of U.S. Patent No. 8,504,696 were unpatentable as obvious., noting that\u00a0VirnetX was collaterally estopped from\u00a0relitigating the threshold … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[26,1],"tags":[],"class_list":["post-2320","post","type-post","status-publish","format-standard","hentry","category-inter-partes-review","category-uncategorized"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2320","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=2320"}],"version-history":[{"count":1,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2320\/revisions"}],"predecessor-version":[{"id":2321,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2320\/revisions\/2321"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=2320"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=2320"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=2320"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}