The Patent Trial and Appeal Board said in final written decisions in inter partes reviews of claims of two patents related to the ones in VirnetX Holding Corp.’s (VHC) six year infringement battle with Apple Inc. (APPL) were invalid under the prior art.
In the first decision, a three judge panel of the PTAB ruled that claims 1–8, 10–20, and 22–25 of U.S. Patent No. 8,850,009 B2 are unpatentable as obvious under the prior art. A second panel ruled that claims 1 to 34 of U.S. Patent No. 8,868,705 also are unpatentable based on the prior art.
The ‘009 patent is entitled system and method employing an agile network protocol for secure communications using secure domain names. The ‘705 patent is entitled agile network protocol for secure communications using secure domain names.
The ’009 patent describes secure methods for communicating over the Internet, while the ’705 patent describes a system and method for transparently creating an encrypted communications channel between a client device and a target device.
The rulings are a blow to Zephyr Cove, Nevada-based VirnetX, but won’t affect its two pending cases against Apple, which involve different patents. Those cases have been ongoing since 2010 and 2011. In the first, VirnetX won awards of $368 million and then $625 from two separate juries, which were later thrown out as excessive.
“If these aren’t the same patents as the ones in suit that’s certainly not as devastating for VirnetX,” said Mark Gober, a senior director at 3LP Advisors in Silicon Valley. “Still not a good sign to see their patents being killed after a lot of fighting on this topic. One has to wonder if Apple will make sure the courts are aware of this, in an attempt to cast doubt on the validity of the VirnetX patents-in-suit.”
Officials for VirnetX declined to comment on the PTAB ruling.
Apple officials couldn’t be reached for comment.
VirnetX was represented by Jeffrey P. Kushan, Scott Border and Thomas A. Brougham III of Sidley Austin LLP.
Apple was represented by Joseph E. Palys, Naveen Modi, Daniel Zeilberger and Chetan R. Bansal of Paul Hastings LLP.
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