Appeals from the United States Patent and Trademark Office,
Patent Trial and Appeal Board in No. IPR2016-00331.
Victor Timofeyev, Paul Hastings LLP, Washington, DC, argued
for appellant. Also represented by Naveen Modi, Stephen Blake
Kinnaird, Joseph Palys, Michael Wolfe, Daniel Zeilberger.
C. O'Quinn, Kirkland & Ellis LLP, Washington, DC,
argued for appellee. Also represented by Nathan S. Mammen;
Scott Border, Jeffrey Paul Kushan, Sidley Austin LLP,
Newman, O'Malley, and Chen, Circuit Judges.
O'MALLEY, CIRCUIT JUDGE.
Inc. ("VirnetX") appeals from two final written
decisions of the Patent Trial and Appeal Board
("Board") finding that Apple Inc.
("Apple") had demonstrated by a preponderance of
the evidence that claims 1- 11, 14-25, and 28-30 of U.S.
Patent No. 8, 504, 696 ("the '696 patent") were
unpatentable as obvious. VirnetX Inc. v. Apple Inc.,
No. IPR2016-00331 (P.T.A.B. June 22, 2017) ("331
Board Decision"); VirnetX Inc. v. Apple
Inc., No. IPR2016-00332 (P.T.A.B. June 22, 2017)
("332 Board Decision"). Because VirnetX is
collaterally estopped from relitigating the threshold issue
of whether prior art reference RFC 2401 was a printed
publication and because VirnetX did not preserve the only
remaining issue of whether inter partes review procedures
apply retroactively to patents that were filed before
Congress enacted the America Invents Act ("AIA"),
December 2015, Apple filed two petitions for inter partes
review of the '696 patent. In the first petition, Apple
challenged claims 1-11, 14-25, and 28-30 as obvious over U.S.
Patent No. 6, 496, 867 and RFC 2401. In the second petition,
Apple challenged these same claims, except claim 29, as
obvious over various other combinations also involving RFC
2401. The Board instituted inter partes review in both
proceedings. VirnetX filed patent owner responses in which it
argued, as a threshold matter, that RFC 2401 was not a
printed publication under § 102(b) as of November 1998.
In its final written decisions, the Board found that RFC 2401
was a printed publication and concluded that the '696
patent was unpatentable as obvious. VirnetX appeals.
the pendency of VirnetX's appeal in this case, this court
decided VirnetX Inc. v. Apple, Inc., No. 17-1131,
715 Fed.Appx. 1024 (Fed. Cir. Mar. 16, 2018)
("VirnetX I"). In VirnetX I,
VirnetX appealed seven final written decisions in which the
Board found that RFC 2401, in combination with other
references, rendered obvious a number of patents related to
the '696 patent. In relevant part, VirnetX argued to the
Board that RFC 2401 was not a printed publication as of
November 1998. The Board disagreed. On March 16, 2018, we
summarily affirmed the Board's decisions pursuant to
Federal Circuit Rule 36. VirnetX I, 715 Fed.Appx. at
the mandate issued in VirnetX I, Apple submitted a
notice of supplemental authority in this case, notifying the
court of the relevance of our Rule 36 judgment in VirnetX
I to the present appeal. The issue was also discussed by
the parties during oral argument. According to Apple, VirnetX
is collaterally estopped by our judgment in VirnetX
I from relitigating the printed publication issue.
VirnetX responds that it is not collaterally estopped, and,
even if it were, such a finding would not resolve all issues
in this appeal because VirnetX preserved a separate
constitutional challenge in its opening brief. We have
jurisdiction pursuant to 28 U.S.C. § 1295(a)(4).
is collaterally estopped from relitigating an issue if:
(1) a prior action presents an identical issue; (2) the prior
action actually litigated and adjudged that issue; (3) the
judgment in that prior action necessarily required
determination of the identical issue; and (4) the prior
action featured full representation of the estopped party.
Stephen Slesinger, Inc. v. Disney Enterprises, Inc.,
702 F.3d 640, 644 (Fed. Cir. 2012). Collateral estoppel or
"issue preclusion applies where the[se] . . . [elements]
of collateral estoppel are carefully observed." B
& B Hardware, Inc. v. Hargis Indus., Inc., 135 S.Ct.
1293, 1306 (2015) (quotations omitted). This is no different
in the context of a Rule 36 judgment. Phil-Insul Corp. v.
Airlite Plastics Co., 854 F.3d 1344, 1356 (Fed. Cir.
2017). While not all Rule 36 judgments will "satisfy
those ordinary elements, that does not mean none will."
See B & B Hardware, 135 S.Ct. at 1306.
Accordingly, we have held that a Rule 36 judgment may serve
as a basis for collateral estoppel so long as these
elements-including the ...