Virnetx Inc. v. Apple Inc.

N OTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
VIRNETX INC.,
Appellant
v.
APPLE INC.,
Appellee
KATHERINE K. VIDAL, UNDER SECRETARY OF
COMMERCE FOR INTELLECTUAL PROPERTY
AND DIRECTOR OF THE UNITED STATES
PATENT AND TRADEMARK OFFICE,
Intervenor
______________________
2022-1523
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. 95/001,682.
______________________
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 .
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VIRNETX INC. v. APPLE INC. 2
J OSHUA J OHN F OUGERE, Sidley Austin LLP, Washing-
ton, DC, argued for appellee. Also represented by T HOMAS
ANTHONY BROUGHAN, III, J EFFREY P AUL KUSHAN; SCOTT
BORDER, Winston & Strawn LLP, Washington, DC.
SARAH E. CRAVEN, Office of the Solicitor, United States
Patent and Trademark Office, Alexandria, VA, argued for
intervenor. Also represented by T HOMAS W. K RAUSE,
MONICA B ARNES L ATEEF , AMY J. N ELSON, F ARHEENA
YASMEEN RASHEED.
______________________
Before L OURIE, BRYSON, and CHEN, Circuit Judges.
BRYSON, Circuit Judge.
In this appeal from an inter partes reexamination
proceeding before the Patent Trial and Appeal Board, the
appellant VirnetX Inc. challenges the Board’s decision
holding that several claims of VirnetX’s U.S. Patent No.
6,502,135 (“the ’135 patent”) are invalid. We affirm.
I
The ’135 patent is directed to a system and method for
communicating over the Internet and creating a virtual
private network following a domain-name server look-up
function.1 Claim 18 of the ’135 patent, which is the
principal focus of VirnetX’s appeal, provides as follows:
18. A method of transparently creating a virtual
private network (VPN) between a client computer
and a target computer, comprising the steps of
(1) generating from the client computer a Domain
Name Service (DNS) request that requests an IP
1 A domain name server uses a look-up table to cor-
relate human-readable domain names to IP addresses and
returns the IP address to the user.
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VIRNETX INC. v. APPLE INC. 3
address corresponding to a domain name associ-
ated with the target computer;
(2) determining whether the DNS request trans-
mitted in step (1) is requesting access to a secure
web site; and
(3) in response to determining that the DNS re-
quest in step (2) is requesting access to a secure
target web site, automatically initiating the VPN
between the client computer and the target com-
puter, wherein:
steps (2) and (3) are performed at a DNS server sep-
arate from the client computer, and step (3) com-
prises the step of, prior to automatically initiating
the VPN between the client computer and the tar-
get computer, determining whether the client com-
puter is authorized to resolve addresses of non
secure target computers and, if not so authorized,
returning an error from the DNS request.
At the conclusion of the reexamination, the examiner
found claim 18, along with several other claims of the ’135
patent, to be invalid for anticipation and obviousness over
several references. The Board reversed some of the exam-
iner’s rejections but affirmed the rejections of claims 10–14
and 17–18 on various grounds.
First, the Board upheld the examiner’s rejection of
claim 18 for obviousness over a combination of three refer-
ences—Beser, Kent, and Blum.2 Second, the Board upheld
the examiner’s rejection of claim 18 for anticipation based
2 The Beser reference is U.S. Patent No. 6,496,867;
the Kent reference is a November 1998 paper entitled “Se-
curity Architecture for the Internet Protocol”; and the
Blum reference is U.S. Patent No. 6,182,141.
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VIRNETX INC. v. APPLE INC. 4
on a reference the Board referred to as BinGO.3 Third, the
Board upheld the examiner’s rejection of claims 10 and 12
as anticipated by BinGO. Fourth, the Board upheld the
examiner’s rejection of claim 11 as obvious over a combina-
tion of BinGO and a reference the Board referred to as
Reed.4 The Board also affirmed the examiner’s rejection of
claims 13, 14, and 17, but VirnetX does not challenge the
Board’s rulings on those claims.
We affirm the Board’s decision on appeal with respect
to claims 10, 12, and 18 based on BinGO and, with respect
to claim 11, based on the combination of BinGO and Reed.
In view of our decisions regarding BinGO and the combina-
tion of BinGO and Reed, we do not find it necessary to ad-
dress the Board’s reliance on the combination of Beser,
Kent, and Blum.5
II
A
At the outset of its discussion of BinGO, VirnetX com-
plains that the Board “recrafted” claim 18, “ignored the
claim language,” and failed to address the limitations set
forth in the claim. In particular, VirnetX argues that the
Board misconstrued the “wherein” clause of claim 18, omit-
ting the “prior to initiating the VPN” limitation and
3 The BinGO reference consists of the BinGO! User’s
Guide and the BinGO! Extended Feature Reference.
4 The Reed reference is a paper by Michael G. Reed,
Paul F. Syverson, and David M. Goldschlag entitled Prox-
ies for Anonymous Routing, presented at the 12th Annual
Computer Security Applications Conference in December
1996.
5 We also find it unnecessary to address the Board’s
reliance on collateral estoppel with respect to issues con-
cerning the combination of Beser and Kent. See J.A. 27–
32.
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VIRNETX INC. v. APPLE INC. 5
mischaracterizing the “determining” limitation. As such,
VirnetX argues, the Board analyzed only its own version of
claim 18, not the actual language of the claim. VirnetX Br.
30.
We disagree with VirnetX’s characterization of the
Board’s treatment of claim 18. To be sure, claim 18 is writ-
ten in a manner that makes it hard to understand, and the
Board confessed that it had difficulty in doing so, especially
in its effort to map claim 18 on any portion of the ’135 writ-
ten description.6
VirnetX’s quarrel with the Board’s treatment of claim
18 relates to the Board’s statement that it needed to decide
“whether, as a general matter, the Beser, Kent, and Blum
references would have rendered obvious determining
whether a client has permission to access a web site and if
not, returning an error message.” J.A. 31. That general
characterization of the thrust of claim 18 does not indicate
that the Board misunderstood the limitations of the claim,
and particularly the “wherein” clause on which VirnetX fo-
cuses. In its discussion of obviousness, the Board accu-
rately characterized that clause as requiring a
determination of “whether a client is authorized to access
a non secure target computer and returning an error if the
6 We agree with the Board that claim 18, as drafted,
is not easy to understand. Moreover, the Board was correct
in stating that the written description of the ’135 patent
appears to contain nothing that describes the invention re-
cited in claim 18. VirnetX seems to concede as much. As
support for the claim, VirnetX points not to the written de-
scription, but to a canceled claim that was part of the initial
application that ultimately matured into the ’135 patent.
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VIRNETX INC. v. APPLE INC. 6
client is not authorized to access a non-secure target.” J.A.
32.7
Later in its decision, when the Board discussed
whether BinGO anticipates claim 18, the Board again ac-
curately characterized the requirements of claim 18. In
that portion of its decision, the Board walked through the
limitations of claim 18, pointing out how BinGO satisfied
each of them. The Board explained that if a user enters a
domain name server request for a website and the destina-
tion is unknown to the BinGO! Router, the BinGO! Router
will forward the request to a domain name server for do-
main name resolution, satisfying steps (1) and (2) of claim
18. J.A. 44–45. If the request from the client computer is
for a secure target computer, the Board added, the BinGO!
Router sets up a virtual private network consistent with
step (3) of the claimed method. J.A. 45.
The Board then examined the last limitation of claim
18, which comprises the step of “determining whether the
client computer is authorized to resolve addresses of non
secure target computers and, if not so authorized,
returning an error from the DNS request.” As to that
limitation, the Board found that BinGO “discloses
authentication of the initiating partner, which would
include situations where the requested web-site is non-
secure” and that a person of ordinary skill in the art would
“have immediately understood that such an authentication
failure would result in an error message being returned.”
7 VirtnetX’s contention that the Board ignored the
“prior to automatically initiating the VPN” component of
the “wherein” limitation overlooks the examiner’s finding,
upheld by the Board, that the BinGO! Router “discloses re-
quiring authentication before establishing connections to a
remote server, by disclosing checking incoming data to de-
cide whether the connection should be allowed.” J.A. 37–
38.
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VIRNETX INC. v. APPLE INC. 7
Id. Throughout that analysis, contrary to VirnetX’s
contention, the Board neither recrafted claim 18 nor
misconstrued its limitations.
B
VirnetX raises two principal contentions regarding the
Board’s reliance on BinGO to anticipate claim 18. First,
VirnetX notes that the Board’s anticipation analysis was
based not only on the instruction manual known as the
BinGO! User Guide, but also on the supplemental
instruction manual known as the BinGO! Extended
Feature Reference. VirnetX contends that the Board’s
reliance on two separate references disqualifies
anticipation as an invalidating theory, because
anticipation requires that all the limitations of a
challenged claim be found in a single reference. Second,
VirnetX argues that the Board committed error when it
found that a person of ordinary skill in the art would have
understood that an error message would be returned if the
client computer is authorized to resolve addresses of non-
secure target computers. VirnetX contends that
anticipation cannot rest on a finding that a person of
ordinary skill in the art would have envisaged a limitation
that is, in fact, missing from the purportedly anticipating
reference. Neither argument is persuasive.
1
As for the argument that the BinGO! User Guide and
the BinGO! Extended Feature Reference are separate
references and that they cannot be combined for purposes
of anticipation, the Board found that the User Guide
incorporates the Extended Feature Reference and thus the
two references must be treated as one for anticipation
purposes. That finding is consistent with the law of
anticipation. See Advanced Display Sys., Inc. v. Kent State
Univ., 212 F.3d 1272, 1282 (Fed. Cir. 2000) (material in a
second document is considered incorporated by reference in
a host document if the context “makes clear that the
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VIRNETX INC. v. APPLE INC. 8
material is effectively part of the host document as if it
were explicitly contained therein”); see also Callaway Golf
Co. v. Acushnet Co., 576 F.3d 1331, 1346 (Fed. Cir. 2019)
(incorporation by reference requires that the host
document “contain language clearly identifying the subject
matter which is incorporated and where it is to be found”)
(cleaned up). Whether and to what extent material has
been incorporated by reference is a question of law that we
review de novo. Advanced Display, 212 F.3d at 1283;
Callaway Golf, 576 F.3d at 1346.
The BinGO! User Guide repeatedly cites to the BinGO!
Extended Feature Reference, instructing the reader to
consult the Extended Feature Reference for information
about how to configure the virtual private network of the
BinGO! Router. The evidence shows that the two
documents were “collectively distributed as a single
reference document,” and that the User Guide directs users
to consult specific parts of the Extended Feature Reference
to implement the VPN features of the BinGO! Router. See
J.A. 6298 (citing portions of the User Guide). The two
documents thus serve in effect as two volumes of a single
instruction manual for using the BinGO system. As such,
the Board was correct in holding that the BinGO! User
Guide incorporates the BinGO! Extended Feature
Reference and that the two references can be considered as
one for purposes of anticipation.
2
We also reject VirnetX’s argument that the Board
improperly found anticipation given its acknowledgement
that “BinGO does not expressly disclose returning an error
message” as required by claim 18. J.A. 45. This court has
made clear that a reference can anticipate, even when it
does not expressly recite a claimed limitation, if a person of
ordinary skill in the art “would reasonably understand or
infer from the prior art reference’s teaching that every
claim [limitation] was disclosed in that single reference.”
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VIRNETX INC. v. APPLE INC. 9
Genentech, Inc. v. Hospira, Inc., 946 F.3d 1333, 1340–41
(Fed. Cir. 2020) (quoting CRFD Research, Inc. v. Matal, 876
F.3d 1330, 1338 (Fed. Cir. 2017)). On the other hand, a
reference that is missing a limitation does not anticipate
just because “a skilled artisan would ‘at once envisage’ the
missing limitation.” Id. at 1340 (quoting Nidec Motor Corp.
v. Zhongshan Board Ocean Motor Co., 851 F.3d 1270,
1274–75 (Fed. Cir. 2017). The core inquiry is whether a
person of ordinary skill in the art would understand the
reference to disclose the limitation in question, rather than
merely “envisage” a limitation that is in fact missing from
the reference.
In this case, the Board concluded that one of ordinary
skill in the art “would have immediately understood” that
an authentication failure in the BinGO system “would
result in an error message being returned.” J.A. 45 (citing
Apple’s Comments Pursuant to 37 C.F.R. § 1.947, J.A.
6299). That is, the limitation in question—returning an
error message upon determining that the client computer
is not permitted to resolve addresses of non secure target
computers—would be understood to be disclosed by the
BinGO reference, even though not expressly stated as such
in the reference itself. That finding is supported by
substantial evidence and is sufficient to satisfy the
requirements of anticipation under Genentech.
3
Apart from those two principal challenges to the
Board’s use of BinGO as an anticipating reference, VirnetX
asserts in passing that BinGO “operates differently than
claim 18.” VirnetX Br. 32. The evidence on which VirnetX
relies in making that argument consists of statements from
its expert’s declaration to the effect that BinGO does not
disclose “determining if the user’s PC is authorized to
resolve addresses not located” on the network and does not
disclose “performing such a determination with respect to
‘non secure target computers.’” Id. (citing J.A. 4122–23).
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VIRNETX INC. v. APPLE INC. 10
Apple offered contrary evidence, which the examiner
credited, and the Board upheld the examiner’s findings on
that issue. J.A. 44–45. In particular, Apple offered
evidence that in one configuration BinGO requires
authentication before the DNS request is resolved, without
regard to whether the request specifies a secure or non-
secure destination; Apple’s evidence also showed that
BinGO discloses routers that establish and maintain
connections to multiple networks based on the destination
specified in a DNS request. See J.A. 351–52, 6296–97;
Right of Appeal Notice pp. 25–26 (Nov. 6, 2019). That is,
because BinGO discloses authentication based on target
computer security, a person of ordinary skill in the art
would understand that BinGO discloses determining
whether a user’s computer is authorized to resolve
addresses not located on the network, including those of
non secure target computers. We conclude that substantial
evidence supports the Board’s determination on that issue.
For those reasons, we sustain the Board’s ruling that
BinGO anticipates claim 18 of the ’135 patent. Because we
have upheld the use of the BinGO! User Guide and the
BinGO! Extended Feature Reference as a single reference,
and because VirnetX has not challenged the rejections of
claims 10 and 12 on other grounds in this appeal, we
uphold those rejections as well.
III
VirnetX makes a brief reference to claim 11, arguing
that the obviousness rejection of claim 11 based on BinGO
and Reed “fails for the same reason” as the rejections of
claims 10, 12, and 18 based on BinGO. VirnetX Br. 36.
With respect to claim 11, VirnetX makes the same
argument that the two BinGO references cannot be
considered as one. Because that argument has been
rejected for anticipation purposes, it fails a fortiori in the
obviousness context.
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VIRNETX INC. v. APPLE INC. 11
IV
A
VirnetX’s final point on appeal relates to the way the
Patent and Trademark Office (“PTO”) handled VirnetX’s
request for rehearing of the Board’s decision. In its six-
page request for rehearing, VirnetX sought reconsideration
of various aspects of the Board’s ruling, including a single
paragraph devoted to the Board’s reliance on BinGO as an
anticipating reference for claim 18.
In the concluding paragraph of the request for
rehearing, VirnetX stated that “reconsideration of all of
VirnetX’s prior arguments, which VirnetX continues to
maintain, is also appropriate here given imminent
guidance from the Supreme Court regarding the proper
remedy for decisions rendered by Board panels whose
appointments did not comport with the requirements of the
Appointments Clause.” J.A. 7055. Citing this court’s
decision in Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d
1320 (Fed. Cir. 2019), VirnetX noted that the court had
held that the Board’s structure “did not comply with the
constitutional requirements because [Board judges] were
principal officers of the United States not appointed in
conformity with the Appointments Clause’s provisions.”
J.A. 7055. VirnetX then pointed out that the Supreme
Court “may agree that the remedy [discussed by the
Federal Circuit in its Arthrex decision] did not cure the
Appointments Clause violation and/or may order a
different remedy.” Id. at 7056. In its conclusion, VirnetX
stated that “whatever remedy is provided by the Supreme
Court should be provided in the present examination.” Id.
A week after VirnetX filed its request for rehearing, the
Supreme Court issued its decision in Arthrex, in which it
agreed with the Federal Circuit that the unreviewable
authority wielded by Board judges in inter partes review
proceedings is incompatible with the Appointments
Clause, but held that an appropriate remedy was to render
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VIRNETX INC. v. APPLE INC. 12
inoperative the statutory restrictions that prevented the
Director of the PTO from reviewing final decisions issued
by Board judges during such proceedings. United States v.
Arthrex, Inc., 141 S. Ct. 1970 (2021).
Considering VirnetX’s express reference to the
challenge to the constitutionality of the Board’s structure
and VirnetX’s request that it be accorded whatever remedy
the Supreme Court provided in its Arthrex decision, the
Board treated VirnetX’s request for rehearing as a request
for Director review. The Commissioner of Patents, Andrew
Hirshfeld, acting on behalf of the Director, then reviewed
the request and on January 10, 2022, denied it. J.A. 55–
57.
VirnetX now contends that it was improper for the
Board to treat the request for rehearing as a request for
Director review, and that the Board should itself have
ruled on the request for rehearing. As a result, VirnetX
argues, this court should remand the case to the Board for
a further review of the request for rehearing.
Shortly after the Supreme Court’s decision in Arthrex,
the PTO issued interim guidance for Director review of
Board decisions in inter partes review or post-grant review
cases. The guidance explained that in seeking rehearing,
a party must choose between asking for rehearing from the
Board panel or from the Director and would not be
permitted to request both. See Arthrex Q&As, A3, found at
https://uspto.gov/patents/patent-trial-and-appeal-board/
procedures/arthrex-qas (“[A] party may request either
Director review or rehearing by the original PTAB panel,
but may not request both.”). Following the issuance of that
guidance, VirnetX did not specify whether it was seeking
Director review, Board review, or both.
B
VirnetX raises several arguments regarding the
Board’s handling of the request for rehearing. First,
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VIRNETX INC. v. APPLE INC. 13
VirnetX argues that the Board’s failure to render a decision
itself on the request for rehearing violated 37 C.F.R.
§ 41.79(d), which provides that the Board “shall render a
decision on the request for rehearing.” Second, VirnetX
points to the requirement of the Administrative Procedure
Act (“APA”) that an agency “fully and particularly set out
the bases upon which it reached [its] decision,” Power
Integrations, Inc. v. Lee, 797 F.3d 1318, 1323 (Fed. Cir.
2015), and argues that Commissioner Hirshfeld’s denial
order did not adequately explain the basis for his denial of
the request for rehearing. VirnetX Br. 38. Third, VirnetX
contends that it is unclear whether Commissioner
Hirshfeld reviewed the request for rehearing on the merits
rather than simply concluding that Director review is
unavailable in inter partes reexamination proceedings.
VirnetX Br. 41–42.8
As Apple points out, the subtext of VirnetX’s complaint
seems to be that VirnetX should have been permitted to
seek both rehearing by the Board and Director review,
rather than having to elect one form of review or the other.
In the interim guidance provided by the PTO following the
Supreme Court’s decision in Arthrex, however, the PTO
made clear that a party could choose which form of review
to request, but would not be entitled to have a petition for
rehearing reviewed by both the Board and the Director.
While it is true that the PTO issued its interim guidance
8 VirnetX’s fourth argument is that Commissioner
Hirshfeld was not properly appointed as a principal officer
of the United States and thus was not qualified to act on
behalf of the Director in conducting Director review in this
case. Br. 43–44. VirnetX acknowledges that its argument
on that issue is foreclosed by this court’s decision in Ar-
threx, Inc. v. Smith & Nephew, Inc., 35 F.4th 1328 (Fed.
Cir. 2022), and is being raised simply to preserve the issue
for en banc or Supreme Court review.
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VIRNETX INC. v. APPLE INC. 14
after VirnetX filed its request for rehearing, VirnetX could
have made clear, following the issuance of that interim
guidance, that it wished to have the Board rule on its
request for rehearing rather than seeking Director review,
but it did not.
Contrary to the implications of VirnetX’s position, we
do not read section 41.79(d) of the PTO’s regulations to
require the PTO to grant the right to two successive
reviews of a request for rehearing, one by the Board and
the other by the Director. VirnetX cites no authority
indicating that such a two-stage review process is required.
Nor is the PTO’s position that a party seeking rehearing
must choose one or the other of those paths at odds with
the text of section 41.79(d), because the PTO could
reasonably conclude that a party that elects Director
review has waived its right to rehearing by the Board.
As for VirnetX’s second argument, neither the PTO
regulations (including the PTO’s interim guidance) nor the
APA required Commissioner Hirshfeld or the Board to
provide an explanation for his decision to deny VirnetX’s
request for rehearing. The regulation and the interim
guidance do not require such an explanation,9 and the
pertinent portion of the APA, 5 U.S.C. § 555(e), likewise
does not require agencies to explain rehearing denials.
Rather, the statute expressly states that the requirement
of an explanation for agency action does not apply to an
agency decision “affirming a prior denial.” See ICC v. Bhd.
9 The regulation provides that the agency’s decision
on the request for rehearing “is deemed to incorporate the
earlier opinion reflecting its decision for appeal, except for
those portions specifically withdrawn . . . .” 37 C.F.R.
§ 41.79(d). That provision makes it clear that if the agency
does not alter the initial decision on rehearing, the expla-
nation given in the initial decision will serve as the
agency’s final word on the matter.
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VIRNETX INC. v. APPLE INC. 15
of Locomotive Eng’rs, 482 U.S. 270, 283 (1987) (“The vast
majority of denials of reconsideration . . . are made without
statement of reasons, since 5 U.S.C. § 555(e) exempts from
the normal APA requirement of ‘a brief statement of the
grounds for denial’ agency action that consists of ‘affirming
a prior denial.’”).
There is also no force to VirnetX’s third argument—
that Commissioner Hirshfeld’s decision following Director
review may not have been based on the merits. If VirnetX
can be viewed as having elected Director review, it must be
regarded as having accepted the possibility that the
Commissioner might decide the request for rehearing on
procedural grounds rather than on the merits.
Even assuming the PTO erred in treating VirnetX’s
request for rehearing as a request for Director review, we
conclude that the error was harmless. The bulk of
VirnetX’s request for review is addressed to issues not
germane to VirnetX’s appeal in this case. The only portion
of the request for review that is pertinent here is a single
paragraph dealing with claim 18. J.A. 7054–55. In that
paragraph, VirnetX argued that the Board erred in holding
that the error message limitation could be found in BinGO
because a person of ordinary skill in the art would have
immediately understood from the BinGO reference that an
authentication failure would result in an error message
being returned. J.A. 7055. VirnetX does not challenge the
Board’s factual finding on that issue, and we have held
above that the Board’s legal conclusion flowing from that
finding was consistent with our decision in Genentech. It
is therefore highly unlikely that the Board’s decision on the
request for review would have resulted in relief based on
that claim of error.
The other ground on which VirnetX challenged the
Board’s ruling on claim 18 was VirnetX’s assertion, without
elaboration, that the Board “misapprehended” VirnetX’s
argument that BinGO does not disclose limitation (3) of
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VIRNETX INC. v. APPLE INC. 16
claim 18 and the following “wherein” clause of the claim.
In our discussion of the Board’s interpretation of claim 18
above, we analyzed and rejected VirnetX’s argument that
the Board misunderstood claim 18. For the same reasons,
there is no substantial likelihood that the arguments made
in VirnetX’s request for rehearing would have led the
Board to alter its ruling as to claim 18. We therefore
conclude that the PTO’s decision to direct VirnetX’s request
for rehearing to Commissioner Hirshfeld rather than the
Board was, at most, harmless error, and that a remand for
Board consideration of the request is not required.
AFFIRMED
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