Virnetx Inc. v. Katherine K. Vidal, Under Secretary of Commerce for Intellectual Property

N OTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
VIRNETX INC.,
Appellant
v.
KATHERINE K. VIDAL, UNDER SECRETARY OF
COMMERCE FOR INTELLECTUAL PROPERTY
AND DIRECTOR OF THE UNITED STATES
PATENT AND TRADEMARK OFFICE,
Intervenor
______________________
2017-2593
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2016-
00693.
______________________
Decided: October 20, 2023
______________________
D ANIEL ZEILBERGER , Paul Hastings LLP, Washington,
DC, argued for appellant. Also represented by S TEPHEN
BLAKE K INNAIRD, N AVEEN MODI, J OSEPH P ALYS , I GOR
VICTOR T IMOFEYEV.
BRIAN R ACILLA, Office of the Solicitor, United States
Patent and Trademark Office, Alexandria, VA, argued for
Case: 17-2593 Document: 112 Page: 1 Filed: 10/20/2023

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VIRNETX INC. v. VIDAL 2
intervenor. Also represented by MICHAEL S. F ORMAN,
D ANIEL K AZHDAN, T HOMAS W. K RAUSE, F ARHEENA
YASMEEN RASHEED.
______________________
Before L OURIE, BRYSON, and CHEN, Circuit Judges.
P ER CURIAM .
Appellant VirnetX Inc. (VirnetX) seeks review of a de-
cision of the Patent Trial and Appeal Board (Board) holding
that claims 1–2, 5–6, 15–16, 27, 33, 36–37, 39–40, 51, 57,
and 60 of VirnetX’s U.S. Patent No. 7,418,504 (’504 patent)
are unpatentable. VirnetX challenges the Board’s determi-
nation that dependent claim 5 is unpatentable and argues
that the Board’s decision as to the other claims are moot in
view of our affirmance of rejections of claims 36–37, 39–40,
51, 57, and 60 in VirnetX Inc. v. Apple Inc., 931 F.3d 1363
(Fed. Cir. 2019) and our affirmance of rejections of claims
1–2, 6, 15–16, 27, and 33 in VirnetX Inc. v. Cisco Systems,
Inc., 776 F. App’x 698 (Fed. Cir. 2019). At oral argument,
counsel for VirnetX further acknowledged that if we affirm
in VirnetX Inc. v. Cisco Systems, Inc., No. 22-2234, argued
the same day as this case, this case would be entirely moot.
We have today affirmed the Board’s decision in the co-
pending Cisco appeal. See VirnetX Inc. v. Cisco Systems,
Inc., No. 22-2234, slip op. 7, ––– F. App’x –––, ––– (Fed.
Cir. Oct. 20, 2023). This case is therefore moot, and the
appeal will be dismissed. We decline to vacate the Board’s
decision in this case as part of our judgment dismissing this
appeal, as VirnetX has not offered any reason as to why the
unreviewed Board decision would require the discretionary
remedy of vacatur. See U.S. Bancorp Mortg. Co. v. Bonner
Mall P’ship, 513 U.S. 18 (1994); Apple Inc. v. Qualcomm
Inc., 17 F.4th 1131, 1137 (Fed. Cir. 2021); see also LSI
Corp. v. U.S. Int’l Trade Comm’n, 604 F. App’x 924, 930
(Fed. Cir. 2015) (noting that the decision whether to vacate
a judgment when the case becomes moot by happenstance
Case: 17-2593 Document: 112 Page: 2 Filed: 10/20/2023

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VIRNETX INC. v. VIDAL 3
while on appeal is a matter “not of constitutional necessity
but of remedial discretion”).
DISMISSED
Case: 17-2593 Document: 112 Page: 3 Filed: 10/20/2023

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