Virnetx Inc. v. Cisco Systems, Inc.

N OTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
VIRNETX INC.,
Appellant
v.
CISCO SYSTEMS, INC.,
Appellee
KATHERINE K. VIDAL, UNDER SECRETARY OF
COMMERCE FOR INTELLECTUAL PROPERTY
AND DIRECTOR OF THE UNITED STATES
PATENT AND TRADEMARK OFFICE,
Intervenor
______________________
2019-1671
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. 95/001,679.
______________________
Decided: October 20, 2023
______________________
I GOR V ICTOR T IMOFEYEV, Paul Hastings LLP, Washing-
ton, DC, argued for appellant. Also represented by
STEPHEN BLAKE K INNAIRD, N AVEEN MODI, J OSEPH P ALYS ,
D ANIEL ZEILBERGER .
Case: 19-1671 Document: 120 Page: 1 Filed: 10/20/2023

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VIRNETX INC. v. CISCO SYSTEMS, INC. 2
T HEODORE M. F OSTER, Haynes and Boone, LLP, Den-
ver, CO, argued for appellee. Also represented by D EBRA
J ANECE MC COMAS , D AVID L. MCC OMBS , Dallas, TX.
MELISSA N. P ATTERSON, Appellate Staff, Civil Division,
United States Department of Justice, Washington, DC, for
intervenor. Also represented by COURTNEY D IXON, SCOTT
R. MCI NTOSH ; T HOMAS W. K RAUSE, B RIAN RACILLA,
F ARHEENA YASMEEN RASHEED, Office of the Solicitor,
United States Patent and Trademark Office, Alexandria,
VA.
______________________
Before L OURIE, BRYSON, and CHEN, Circuit Judges.
P ER CURIAM .
Appellant VirnetX Inc. seeks review of a decision of the
Patent Trial and Appeal Board holding that various claims
of VirnetX’s U.S. Patent No. 6,502,135 are invalid for obvi-
ousness and anticipation.
This appeal has been overtaken by events. A decision
by this court earlier this year in VirnetX Inc. v. Mangrove
Partners Master Fund, Ltd., No. 2020-2271, 2023 WL
2708975 (Fed. Cir. Mar. 30, 2023), upheld the decision of
the Board in an inter partes review holding that various
claims of the ’135 patent were invalid. VirnetX acknowl-
edges that the Mangrove Partners decision renders moot
VirnetX’s arguments as to claims 1, 3–4, and 7–8 of the ’135
patent. Consequently, the only claim of the ’135 patent still
at issue in this case at the time of the oral argument was
claim 18. And counsel for VirnetX acknowledged that if
claim 18 were invalidated in the co-pending case of VirnetX
Inc. v. Apple Inc., No. 2022-1523, 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 Apple appeal. This case is therefore moot, and the
appeal will be dismissed.
Case: 19-1671 Document: 120 Page: 2 Filed: 10/20/2023

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VIRNETX INC. v. CISCO SYSTEMS, INC. 3
Because there has been no suggestion that the exist-
ence of the unreviewed Board decision in this case will
cause unfair prejudice to VirnetX or any other party, we
decline to vacate that decision as part of our judgment dis-
missing this appeal. See U.S. Bancorp Mortg. Co. v. Bonner
Mall P’ship, 513 U.S. 18 (1994). In particular, this is not a
case in which an appellant has been “frustrated by the va-
garies of circumstance” or the “unilateral action” of the ap-
pellee such that the appellant “ought not in fairness be
forced to acquiesce in the judgment.” Apple Inc. v. Qual-
comm Inc., 17 F.4th 1131, 1137 (Fed. Cir. 2021) (quoting
Bonner Mall, 513 U.S. at 25); see also LSI Corp. v. U.S. Int’l
Trade Comm’n, 604 F. App’x 924, 929 (Fed. Cir. 2015) (The
decision whether to vacate a judgment when the case be-
comes moot by happenstance while on appeal is a matter
“not of constitutional necessity but of remedial discre-
tion.”).
DISMISSED
Case: 19-1671 Document: 120 Page: 3 Filed: 10/20/2023

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