Transport Room 2

Case: 18-1197 Document: 103 Page: 1 Filed: 08/19/2019
No. 2018-1197
IN THE
United States Court of Appeals

FOR THE FEDERAL CIRCUIT
VIRNETX INC., LEIDOS, INC.,
Plaintiffs-Appellees,
V.
CISCO SYSTEMS, INC.,

Defendant,
APPLE INC.,
Defendant-Appellant.
On Appeal from the United States District Court for the Eastern District of Texas
Case No. 6:10-cv-00417-RWS, Judge Robert Schroeder, III
OPPOSITION OF VIRNETX INC. AND LEIDOS, INC. TO

APPLE INC.’S MOTION TO STAY THE MANDATE
Bradley Wayne Caldwell Jeffrey A. Lamken

Jason Dodd Cassady Counsel of Record
John Austin Curry Michael G. Pattillo, Jr.
CALDWELL CASSADY & CURRY MOLOLAMKEN LLP
2101 Cedar Springs Road The Watergate, Suite 660
Suite 1000 600 New Hampshire Avenue, N.W.
Dallas, TX 75201 Washington, D.C. 20037
(214) 888-4848 (telephone) (202) 556-2000 (telephone)
(214) 888-4849 (fax) (202) 556-2001 (fax)
jlamken@mololamken.com
Counsel for VirnetX Inc.
(Additional Counsel Listed on Inside Cover)
(
Rayiner I. Hashem Donald Urrabazo
James A. Barta URRABAZO LAW, P.C.
MOLOLAMKEN LLP 2029 Century Park East
The Watergate, Suite 660 Suite 1400
600 New Hampshire Ave., N.W. Los Angeles, CA 90067
Washington, D.C. 20037 (310) 388-9099 (telephone)
(202) 556-2000 (telephone) (310) 388-9088 (fax)
(202) 556-2001 (fax)
Counsel for Leidos, Inc.
Allison M. Gorsuch
MOLOLAMKEN LLP
300 N. LaSalle St.
Chicago, IL 60654
(312) 450-6700 (telephone)
(312) 450-6701 (fax)

FORM 9. Certificate of Interest Form 9
Rev. 10/17
UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT
VirnetX Inc. v. Cisco Systems, Inc.
Case No. 18-1197
CERTIFICATE OF INTEREST
Counsel for the:

(petitioner) (appellant) (respondent) (appellee) (amicus) (name of party)
VirnetX Inc.
certifies the following (use “None” if applicable; use extra sheets if necessary):
2. Name of Real Party in interest 3. Parent corporations and

1. Full Name of Party (Please only include any real party publicly held companies
Represented by me in interest NOT identified in that own 10% or more of
Question 3) represented by me is: stock in the party
VirnetX Inc. VirnetX Inc. VirnetX Holding Corp.
4. The names of all law firms and the partners or associates that appeared for the party or amicus now
represented by me in the trial court or agency or are expected to appear in this court (and who have not
or will not enter an appearance in this case) are:
Avanci LLC: Luke F. McLeroy
Caldwell Cassady & Curry PC: Bradley W. Caldwell, Christopher S. Stewart, Daniel R. Pearson, Hamad M. Hamad, Jason D. Cassady, John A.
Curry, John F. Summers, Justin T. Nemunaitis.
Fish & Richardson PC: Andrew T. Gorham.
Gruber Hail Johansen Shank LLP: Jason S. McManis.
McKool Smith: Seth R. Hasenour, Trent E. Campione, Douglas A. Cawley, Mitchell R. Sibley, Rosemary T. Snider, Ryan A. Hargrave, Stacie G.
McNulty, Christopher L. Limpus, Samuel F. Baxter.
Parker, Bunt & Ainsworth PC: Ramzi R. Khazen, Robert C. Bunt, Robert M. Parker.
Ward, Smith & Hill PLLC: Thomas J. Ward, Jr., Claire A. Henry.
MoloLamken LLP: Jeffrey A. Lamken; Michael G. Pattillo, Jr.; Rayiner I. Hashem; James A. Barta; Allison M. Gorsuch
Rev. 10/17
5. The title and number of any case known to counsel to be pending in this or any other court or agency
that will directly affect or be directly affected by this court’s decision in the pending appeal. See Fed. Cir.
R. 47. 4(a)(5) and 47.5(b). (The parties should attach continuation pages as necessary).
VirnetX Inc. v. Apple Inc., Nos. 17-1591, -1592, -1593 (Fed. Cir.)
VirnetX Inc. v. The Mangrove Partners Master Fund, Ltd., Nos. 17-1368, -1383 (Fed. Cir.)
VirnetX Inc. v. Iancu, Nos. 17-2593, -2594 (Fed. Cir.)
VirnetX Inc. v. Cisco Sys., Inc., No. 18-1751 (Fed. Cir.)
VirnetX Inc. v. Apple Inc., No. 19-1050 (Fed. Cir.)
Control No. 95/001,679 (USPTO)
8/19/2019 /s/ Jeffrey A. Lamken

Date Signature of counsel
Please Note: All questions must be answered Jeffrey A. Lamken

Printed name of counsel
cc: All counsel of record
Reset Fields
Rev. 10/17
UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT
VirnetX Inc. v. Cisco Systems, Inc.
Case No. 18-1197
CERTIFICATE OF INTEREST
Counsel for the:

(petitioner) (appellant) (respondent) (appellee) (amicus) (name of party)
Leidos, Inc.
certifies the following (use “None” if applicable; use extra sheets if necessary):
2. Name of Real Party in interest 3. Parent corporations and

1. Full Name of Party (Please only include any real party publicly held companies
Represented by me in interest NOT identified in that own 10% or more of
Question 3) represented by me is: stock in the party
Leidos, Inc. Leidos, Inc. Leidos Holdings, Inc.
4. The names of all law firms and the partners or associates that appeared for the party or amicus now
represented by me in the trial court or agency or are expected to appear in this court (and who have not
or will not enter an appearance in this case) are:
Urrabazo Law, P.C.: Donald Urrabazo
MT2 Law Group: Andy Tindel
Rev. 10/17
5. The title and number of any case known to counsel to be pending in this or any other court or agency
that will directly affect or be directly affected by this court’s decision in the pending appeal. See Fed. Cir.
R. 47. 4(a)(5) and 47.5(b). (The parties should attach continuation pages as necessary).
VirnetX Inc. v. Apple Inc., Nos. 17-1591, -1592, -1593 (Fed. Cir.)
VirnetX Inc. v. The Mangrove Partners Master Fund, Ltd., Nos. 17-1368, -1383 (Fed. Cir.)
VirnetX Inc. v. Iancu, Nos. 17-2593, -2594 (Fed. Cir.)
VirnetX Inc. v. Cisco Sys., Inc., No. 18-1751 (Fed. Cir.)
VirnetX Inc. v. Apple Inc., No. 19-1050 (Fed. Cir.)
8/19/2019 /s/ Donald Urrabazo

Date Signature of counsel
Please Note: All questions must be answered Donald Urrabazo

Printed name of counsel
cc: All counsel of record
Reset Fields
TABLE OF CONTENTS
Page
BACKGROUND .......................................................................................................2
I. Three Trials Result in Three Verdicts for VirnetX—and Decisions

of This Court Upholding Validity, Damages, and Infringement.....................2
A. Proceedings Leading to This Appeal ...................................................2
B. Apple Repeatedly Seeks To Stay or Stall Court Proceedings

Pending Unsuccessful Efforts To Cancel Claims Through
the PTO ................................................................................................3
C. This Court Summarily Affirms—But Apple Seeks Rehearing,

Rehearing En Banc, and Further Delays .............................................4
D. The Court Denies Rehearing—and Rejects Apple’s Collateral

Estoppel Arguments.............................................................................6
II. The Current Motions ........................................................................................7
ARGUMENT .............................................................................................................8
I. Apple’s Request To Stay the Mandate and These Proceedings

Indefinitely Pending PTO Proceedings Should Be Denied .............................8
II. Apple Has Failed To Justify a Stay of the Mandate Pending

Certiorari Proceedings ...................................................................................10
III. Apple’s Request for a Stay of the Mandate Pending Resolution

of Its Motion To Vacate Denial of Rehearing and for a Second
Rehearing Petition Is Unnecessary ................................................................14
CONCLUSION ........................................................................................................15
i
TABLE OF AUTHORITIES
Page(s)
CASES
Bettcher Indus., Inc. v. Bunzl USA, Inc.,
661 F.3d 629 (Fed. Cir. 2011) ............................................................................ 10
Nara v. Frank,
494 F.3d 1132 (3d Cir. 2007) ............................................................................. 13
Philip Morris USA Inc. v. Scott,

131 S. Ct. 1 (2010) .............................................................................................. 11
Rector v. Lipscomb,
141 U.S. 557 (1891) ............................................................................................ 12
Teva Pharms. USA, Inc. v. Sandoz, Inc.,

134 S. Ct. 1621 (2014) ..................................................................................11, 13
VirnetX Inc. v. Cisco Sys., Inc.,

748 F. App’x 332 (Fed. Cir. 2019) ................................................................... 4, 9
VirnetX, Inc. v. Cisco Sys., Inc.,

767 F.3d 1308 (Fed. Cir. 2014) ...................................................................passim
STATUTES & RULES

35 U.S.C. § 282(b)(2) ............................................................................................... 10
35 U.S.C. § 282(b)(3) ............................................................................................... 10
Fed. R. App. P. 41(a) ............................................................................................... 15
Fed. R. App. P. 41(b) ................................................................................................. 2
Fed. R. App. P. 41(d)(1).................................................................................2, 11, 12
Fed. Cir. R. 35(b)(2)................................................................................................. 14
Fed. Cir. R. 40(a)(4) ................................................................................................. 14
Fed. Cir. R. 41 .......................................................................................................... 11
ii
OTHER AUTHORITIES
Charles Alan Wright et al., Fed. Prac. & Proc. § 3536
(3d ed.) ................................................................................................................ 12
Shapiro et al., Supreme Court Practice

(10th ed. 2013) .................................................................................................... 12
iii
Among other things, Apple seeks an indefinite stay of the mandate until
Apple finishes litigating its seriatim PTO challenges, not merely on remand at the
PTO but until the completion of potential appeals before this Court. Apple has
repeatedly sought such indefinite delays before, seeking to further stall progress in
this already 9-year-old lawsuit, despite this Court having upheld validity years ago
and despite Apple failing to raise any validity issues in this appeal. This Court and
the district court have repeatedly rejected such bids for delay. The Court should
reject this one as well. Apple, in effect, seeks to give PTO proceedings absolute
priority over Article III court determinations. No rule of law supports that result.
Apple’s request for a stay of the mandate pending the filing of a petition for
a writ of certiorari lacks merit as well. Apple does not meet the stringent criteria
required for such a stay. Apple posits concern that, absent a stay, VirnetX may
argue that issuance of the mandate somehow forecloses Supreme Court review
under Fresenius USA, Inc. v. Baxter International Inc., 721 F.3d 1330 (Fed. Cir.
2013). But Apple never explains that argument, much less why it believes VirnetX
will make it. Apple cannot invent spurious arguments, impute them to VirnetX,
and then cite them as grounds for a stay.
Finally, while Apple asks the Court to stay the mandate until it decides
Apple’s motion to vacate the denial of rehearing, and for leave to file a successive
rehearing petition, that relief is not necessary. Apple’s motion to stay the mandate,
by itself, prevents the mandate’s issuance absent contrary order. Fed. R. App. P.
41(b). Accordingly, this Court can act first on Apple’s motion to vacate the denial
of rehearing, and for leave to file a successive rehearing petition, without staying
the mandate in the interim. If the Court denies that motion—it lacks merit—it can
simultaneously deny the motion to stay the mandate as well.1
BACKGROUND
VirnetX filed this patent infringement suit against Apple nine years ago, in
August 2010.
I. THREE TRIALS RESULT IN THREE VERDICTS FOR VIRNETX—AND

DECISIONS OF THIS COURT UPHOLDING VALIDITY, DAMAGES, AND
INFRINGEMENT
A. Proceedings Leading to This Appeal

In November 2012, the jury found that Apple’s VPN on Demand and
FaceTime products infringe claims of VirnetX’s ’135, ’151, ’504, and ’211
Patents. The jury found all four patents not invalid, and awarded damages for both
VPN on Demand and FaceTime infringement. On appeal, this Court affirmed the
finding of validity, but vacated the infringement verdict as to FaceTime and
remanded for a new trial on damages. VirnetX, Inc. v. Cisco Sys., Inc., 767 F.3d
1308, 1313-14 (Fed. Cir. 2014) (“VirnetX I ”).
1
If the Court grants Apple’s motion to file a successive rehearing petition, the
motion to stay the mandate would be moot. An otherwise timely petition for
rehearing stays the mandate as well. Fed. R. Civ. P. 41(b).
2
After remand, another jury returned a verdict in favor of VirnetX, which the
district court set aside. Appx12. Following a third trial in September 2016, yet
another jury found that FaceTime infringed claims of the ’504 and ’211 Patents.
Appx14. It also awarded damages for Apple’s infringement as to both VPN on
Demand and FaceTime. Id. Apple then filed this appeal, Case No. 18-1197.
B. Apple Repeatedly Seeks To Stay or Stall Court Proceedings

Pending Unsuccessful Efforts To Cancel Claims Through the PTO
In the meantime, Apple and associated parties filed multiple proceedings
seeking to invalidate VirnetX’s patents at the PTO. Eventually, VirnetX appealed
several PTO decisions that had found certain claims asserted in this case to be
unpatentable. In Case No. 17-1591, Apple had challenged all asserted claims of
the ’504 and ’211 Patents, and Cisco had challenged all asserted claims of the ʼ211
Patent. In Case No. 18-1751, Cisco had challenged all asserted claims of the ’504
Patent. And in Case No. 17-1368, an entity called Mangrove Partners had
challenged claims of the ’135 and ’151 Patents.
Apple’s Stay Requests Before the Trial Court. Apple first sought to stay this
district court case pending PTO proceedings in August 31, 2012, more than two
years after it was filed, and just two months before the first trial. Dkt. 477. Apple
then filed three more motions to stay proceedings in the district court. It continued
filing repetitive stay motions even after this Court affirmed the patents’ validity in
3
VirnetX I, leading the district court to enhance damages for such “gamesmanship.”
Appx65.
Apple’s Stay Request Before This Court. At the outset of this appeal (No.
18-1197), Apple asked this Court for a stay pending the appeals of the PTO
proceedings. ECF No. 32. Apple argued that those appeals would soon result in
cancellation of all asserted claims, foreclosing further proceedings in this case (a
prediction that proved false). This Court denied Apple’s stay request. The Court
ordered that this case and the 17-1591 and 17-1368 cases be argued to the same
panel.
C. This Court Summarily Affirms—But Apple Seeks Rehearing,

Rehearing En Banc, and Further Delays
On January 6, 2019, this Court heard argument in this case together with the
17-1591 and 17-1368 cases. At argument, Apple again addressed the potential
implications of the PTO appeals on this case. Tr. 0:37-3:52, 26:00-27:10, 38:40-
41:20. Nine days later, on January 15, 2019, this Court summarily affirmed the
judgment in this case under Rule 36. VirnetX Inc. v. Cisco Sys., Inc., 748 F. App’x
332 (Fed. Cir. 2019) (“VirnetX II ”).
Apple’s Request for Rehearing. Apple sought panel rehearing and rehearing
en banc. ECF No. 78. Apple’s petition addressed damages, jury instructions, and
computation of pre-judgment interest. Apple also used its rehearing petition as a
sixth attempt to seek a stay—asking this Court to hold its decision on rehearing “at
4
least” pending this Court’s decisions in the 17-1591 and 17-1368 cases, and
possibly also the 18-1751 case. ECF No. 78 at 16-18 & n.7.
Apple’s rehearing petition remained pending for nearly five months. During
that time, all of the PTO appeals for which Apple had asked the Court to hold its
rehearing petition were decided. While this Court affirmed the PTO’s findings of
unpatentability as to some asserted claims, it reversed as to others. In case No. 18-
1751, this Court held that the PTAB had failed to explain how the asserted
Lendenmann reference disclosed the “authentication” requirement of claims 5, 12,
and 13 of the ’504 Patent. 18-1751 Op. 7-8. The Court thus remanded for further
proceedings. Id. at 10. In case No. 17-1368, this Court held that substantial
evidence did not support the Board’s finding that claims of the ’151 Patent were
invalid over the asserted Kiuchi reference, and that the Board had erred in its
construction of the relevant claims of the ’135 Patent. 17-1368 Op. 23. The Court
remanded for further proceedings. Id.
Apple’s Supplemental Brief. After this Court’s decision in No. 18-1751
issued, Apple filed a supplemental brief in this case and in the then-still-pending
case No. 17-1591. ECF No. 86; 17-1591 ECF No. 96. Apple urged that “[t]he
preclusive effect” of the decision in No. 18-1751—which affirmed unpatentability
findings as to certain claims of the ’504 Patent—required holding claims of the
’211 Patent invalid in both the (still undecided) case No. 17-1591 and in this
5
(already decided) case as well. ECF No. 86 at 1-2, 9. Apple also urged the Court
to stay its decision on the rehearing petition pending resolution of other PTO
appeals and any follow-on proceedings—effectively a seventh stay motion. Id. at
14. VirnetX filed supplemental briefs in response, explaining why collateral
estoppel did not apply across the patents as Apple claimed. See ECF No. 92; 17-
1591 ECF No. 105.
D. The Court Denies Rehearing—and Rejects Apple’s Collateral

Estoppel Arguments
On August 1, 2019, this Court issued its decision in case No. 17-1591. It
held that pre-AIA 35 U.S.C. § 317(b) required the PTO to terminate Apple’s
reexamination proceedings with respect to claims 1-35 of the ʼ504 Patent and
claims 36-59 if the ʼ211 Patent upon this Court’s affirmance of patent validity in
VirnetX I. 17-1591 Op. 28. The Court affirmed the PTO’s unpatentability findings
as to claims of the ’504 and ’211 Patents that were not subject to § 317(b). Id.
The Court specifically addressed the arguments Apple made in its
supplemental brief “regarding the relationship between this case and other recently
decided matters”—in particular, Apple’s “argu[ment] that collateral estoppel
renders various claims of the ’504 and ’211 patents invalid.” 17-1591 Op. 24 n.15.
The Court found Apple’s argument in part moot (as to claims for which invalidity
was upheld on the merits), and rejected it as “[o]therwise . . . unpersuasive.” Id.
“Apple,” this Court held, “has failed to show why collateral estoppel is appropriate
6
under these circumstances.” Id. That same day, this Court denied Apple’s petition
for rehearing and rehearing en banc in this case. ECF No. 97.
As a result, the damages verdict in this case remains fully supported by
claims found not invalid by this Court. Claim 5 of the ʼ504 Patent supports the
infringement verdict for FaceTime, and several claims of the ʼ135 and ʼ151 Patents
support the infringement verdict for VPN on Demand.
II. THE CURRENT MOTIONS

On August 7, 2019, Apple filed the motion to stay the mandate at issue here.
Concurrently, Apple filed a motion asking the Court to vacate its denial of
rehearing and grant Apple leave to file a second petition for rehearing and
rehearing en banc (or alternatively, yet another supplemental brief). ECF No. 99-
1. Apple urged that rehearing was necessary to consider the supposed collateral
estoppel effects of the Court’s decision with respect to the validity of claim 5 of the
ʼ211 Patent in Case No. 17-1591 on the validity of claim 5 of the ʼ504 Patent in
this case, id. at 14—essentially the same cross-patent theory this Court had already
dismissed as “unpersuasive,” 17-1591 Op. 24 n.15. Apple also made what
amounts to its eighth request for an indefinite stay of this case, asking this Court to
withhold action pending resolution of all PTO proceedings concerning the asserted
patents, including PTO proceedings on remand and appeal. ECF No. 99-1 at 19-
21. VirnetX has filed its opposition to that motion. ECF No. 101.
7
ARGUMENT
I. APPLE’S REQUEST TO STAY THE MANDATE AND THESE PROCEEDINGS

INDEFINITELY PENDING PTO PROCEEDINGS SHOULD BE DENIED
Apple asks that the Court withhold the mandate indefinitely. Mot. 8-9.
Apple asks for that relief in the hope that some future appeal, from some other
PTO proceeding, may achieve what Apple has been unable to achieve thus far—in
nine years of litigation—cancellation of all claims necessary to this judgment. Id.
Apple insists that this case “would have been stayed in its entirety pending the
unpatentability proceedings” if it had been “before most district courts in the
country.” Id. at 9. But Apple never sought this Court’s review of the district
court’s stay rulings.2 And whatever Apple’s hypothetical district court might have
done, this Court has already denied Apple’s request for such open-ended stays
repeatedly—including in Apple’s pre-briefing motion to stay, ECF No. 32; its
petition for panel and en banc rehearing, ECF No. 78; and its supplemental brief in
support of rehearing, ECF No. 86. Nine years, three trials, two appeals, and eight
stay motions into this case, the Court should deny the request yet again (along with
Apple’s request to file a second rehearing petition, ECF No. 99-1 at 19-20).
Apple’s argument that a stay is warranted because PTO proceedings have
the “potential for simplifying proceedings” in this case begs credulity. Mot. 9.
2
Apple shows no abuse of discretion. Apple first sought a stay shortly before the
first trial, two years into the litigation. See pp. 3-4, supra.
8
After nine years of litigation, this Court has upheld validity, upheld infringement,
upheld the damages award, affirmed the judgment below, and denied Apple’s
request for rehearing en banc. VirnetX I, 767 F.3d at 1313-14; 748 F. App’x 332;
ECF No. 97. No issues remain live. There are thus no “proceedings” before the
trial court or this Court that could possibly be “simplified” from awaiting future
PTO proceedings. Apple identifies none.
Apple invokes the non-precedential decision in Prism Technologies LLC v.
Sprint Spectrum LP, 757 F. App’x 980 (Fed. Cir. 2019), for the proposition that
there is a “policy against enforcing an unexecuted judgment of patent liability”
where each of several conditions is satisfied, including where “the patent claims
underlying that judgment have been held invalid by another decision having
sufficient finality for this purpose,” Mot. 8. But that is not the case here. Three
appeals from PTO proceedings have been decided. Yet the judgment remains fully
supported by asserted patent claims. While Apple claims it is not yet “clear
whether [the] judgment rests on a legally sound foundation,” id. at 9, this Court
previously upheld the patents’ validity against Apple’s challenge in this case,
VirnetX I, 767 F.3d at 1313-14. Congress gave Article III courts jurisdiction to
decide issues of patent validity long before it gave the PTO authority to conduct re-
examinations to cancel previously issued patents. See 35 U.S.C. §§ 101-103; id.
§ 282(b)(2) & (3); see also Bettcher Indus., Inc. v. Bunzl USA, Inc., 661 F.3d 629,
9
647 (Fed. Cir. 2011). This Court’s prior decision on validity in this very case is a
“legally sound foundation” for the judgment.
Referring to its “concurrently-filed submissions,” Apple instead argues that
“additional proceedings before this Court and the PTO could . . . lead to a deter-
mination that the asserted claims” are invalid. Mot. 8 (emphasis added). VirnetX
has explained why those arguments fail in its opposition to those submissions, see
ECF No. 101 at 16-19, and will not repeat them here. Suffice to say that Apple’s
arguments—which posit Apple or Cisco first obtaining en banc review of adverse
decisions in separate cases, then prevailing on the merits in the en banc
proceedings, and then prevailing on an “unpersuasive” theory to apply collateral
estoppel across different cases—are far too speculative and attenuated to support
Apple’s request for an indefinite stay of this case.
II. APPLE HAS FAILED TO JUSTIFY A STAY OF THE MANDATE PENDING

CERTIORARI PROCEEDINGS
Apple argues that, “at a minimum,” the Court should stay the mandate
pending disposition of Apple’s forthcoming petition for certiorari in this case.
Mot. 1-2. A stay of the mandate pending disposition of a petition for a writ of
certiorari is “extraordinary relief,” Teva Pharms. USA, Inc. v. Sandoz, Inc., 134 S.
Ct. 1621, 1621 (2014) (Roberts, C.J., in chambers), subject to “a heavy burden” of
justification, Philip Morris USA Inc. v. Scott, 131 S. Ct. 1, 3 (2010) (Scalia, J., in
chambers). To obtain a stay of the mandate pending a petition for a writ of
10
certiorari, a party “must show that the certiorari petition would present a sub-
stantial question and that there is good cause for a stay.” Fed. R. App. P. 41(d)(1).
Apple can show neither.
A. The only “good cause” for a stay pending certiorari posited by Apple
turns out to be non-existent. Apple speculates that “VirnetX may attempt to argue”
that, under this Court’s decision in Fresenius USA, Inc. v. Baxter International
Inc., 721 F.3d 1330 (Fed. Cir. 2013), issuance of this Court’s mandate somehow
precludes Supreme Court review of the judgment in this case, Mot. 12. Apple does
not explain what such an argument might look like. Issuance of this Court’s
mandate merely has the effect of returning jurisdiction from this Court to the trial
court. As this Court’s rules explain, “[t]hat a mandate has issued does not affect
the right to apply to the Supreme Court for a writ of certiorari.” Fed. Cir. R. 41,
Practice Note. As VirnetX explained in related proceedings—citing the leading
treatise on Supreme Court practice—Supreme Court review of a final judgment
opens up the entire case, allowing the Supreme Court to “reach back and correct
errors” even in an earlier court of appeals decision in the same case where the
mandate has already issued. VirnetX Br. 32 in 17-1591 (quoting Shapiro et al.,
Supreme Court Practice 84 (10th ed. 2013)). Apple cannot invent spurious
arguments, impute them to VirnetX, and then use them to justify a stay.
11
Nor, in any event, can Apple explain why a stay of the mandate is necessary
to counteract its made-up theory. Even if VirnetX tried to urge that issuance of
this Court’s mandate somehow rendered the judgment “impervious” to Supreme
Court review, Mot. 12, the Supreme Court itself could reject such an argument. “It
is not in the power of the circuit court to determine the extent and limits of [the
Supreme Court’s] jurisdiction, for that is a matter which [the Supreme Court] must
finally decide for itself.” Rector v. Lipscomb, 141 U.S. 557, 558 (1891); see also
13D Charles Alan Wright et al., Fed. Prac. & Proc. Juris. § 3536 (3d ed.) (courts
always have “[j]urisdiction to determine jurisdiction”). There is no scenario in
which the Supreme Court will be denied the “opportunity to consider” any petition
for a writ of certiorari Apple might file. Mot. 12. For that reason alone, a stay of
the mandate pending certiorari is unwarranted.
B. Apple also fails in its burden to show that the petition would present a
“substantial question” warranting Supreme Court review. Fed. R. App. P.
41(d)(1). Courts have interpreted that standard as requiring movants to show both
“a reasonable probability that the Supreme Court will grant certiorari,” and “a rea-
sonable possibility that at least five Justices would vote to reverse [the court of
appeals’] judgment.” Nara v. Frank, 494 F.3d 1132, 1133 (3d Cir. 2007); see also
Teva, 134 S. Ct. at 1621 (requiring a “reasonable probability” the Supreme Court
will grant certiorari and a “fair prospect” of reversal on the merits). Apple makes
12
no such showing. Apple presents a laundry list of potential issues for certiorari
review and calls them “substantial.” See Mot. 10-11. But merely saying it doesn’t
make it so. Apple provides no legal argument to establish that its purported issues
could conceivably warrant Supreme Court review, because they do not.
Apple’s appeal in this case raised intensely case- and fact-specific issues of
infringement, damages, admissibility of supposedly prejudicial evidence, and the
manner of calculating pre-judgment interest. ECF No. 82 at 5-15. This Court saw
fit to summarily affirm the judgment below in a non-precedential opinion under
Circuit Rule 36. This Court also rejected Apple’s efforts to recast those as issues
having broader importance when it denied Apple’s petition for rehearing en banc.
ECF No. 97. Apple suggests it will also reach back to challenge issues, such as
anticipation, this Court decided in VirnetX I. Mot. 10-11. But those issues are so
insubstantial that Apple did not even seek rehearing, much less petition for certio-
rari, after that decision issued. That Apple may press one or more of its make-
weight arguments in a certiorari petition provides no basis for staying the mandate
in the meantime.
III. APPLE’S REQUEST FOR A STAY OF THE MANDATE PENDING RESOLUTION

OF ITS MOTION TO VACATE DENIAL OF REHEARING AND FOR A SECOND
REHEARING PETITION IS UNNECESSARY
Apple urges that this Court should stay issuance of the mandate “at least
until it considers and disposes of ” Apple’s motion to vacate the Court’s earlier
13
denial of rehearing and for leave to file a successive rehearing petition. Mot. 7.
VirnetX recently filed its opposition brief, explaining why Apple’s request for the
extraordinary relief of a second rehearing petition should be denied. ECF No. 101.
Apple identifies no “points of law or fact overlooked or misapprehended by the
court” in its Rule 36 affirmance of the judgment below as required for panel
rehearing. Fed. Cir. R. 40(a)(4); ECF No. 101 at 9. Nor does Apple’s motion
identify any “precedent-setting questions of exceptional importance” as required to
support rehearing en banc. Fed. Cir. R. 35(b)(2); ECF No. 101 at 10. A fortiori,
Apple’s motion fails to establish the truly exceptional circumstances needed to
justify leave to file a second en banc petition after its first one was denied. Apple
merely attempts to interject into this case a theory of collateral estoppel between
claims of the ʼ211 and ʼ504 Patents that this Court already rejected as
“unpersuasive.” 17-1591 Op. 24 n.15; ECF No. 101 at 11-16.
Regardless, the requested relief appears unnecessary. By filing a motion to
stay the mandate, Apple has achieved its goal of deferring the mandate’s issuance.
When a motion to stay a mandate is filed, the Federal Rules provide that the
mandate will not issue until after “entry of an order denying a . . . motion for stay
of the mandate.” Fed. R. App. P. 41(b). Accordingly, this Court may proceed to
decide Apple’s motion for leave to file a successive rehearing petition. If that is
denied, the motion to stay the mandate may be denied as well. Consequently,
14
VirnetX does not oppose this Court reserving decision on this motion to stay the
mandate while it considers Apple’s motion to vacate the denial of rehearing and for
leave to file a successive petition for rehearing. The Court should deny that motion
promptly and issue the mandate immediately thereafter.
CONCLUSION
Apple’s motion to stay the mandate should be denied, and the mandate
should issue forthwith.
15
August 19, 2019 Respectfully submitted,
/s/ Jeffrey A. Lamken

Donald Urrabazo Jeffrey A. Lamken
URRABAZO LAW, P.C. Counsel of Record
2029 Century Park East Michael G. Pattillo, Jr.
Suite 1400 Rayiner I. Hashem
Los Angeles, CA 90067 James A. Barta
(310) 388-9099 (telephone) MOLOLAMKEN LLP
(310) 388-9088 (fax) The Watergate, Suite 660
600 New Hampshire Avenue, N.W.
Counsel for Leidos, Inc. Washington, D.C. 20037
(202) 556-2000 (telephone)
(202) 556-2001 (fax)
jlamken@mololamken.com
Allison M. Gorsuch
MOLOLAMKEN LLP
300 N. LaSalle St.
Chicago, IL 60654
(312) 450-6700 (telephone)
(312) 450-6701 (fax)
Bradley Wayne Caldwell

Jason Dodd Cassady
John Austin Curry
CALDWELL CASSADY & CURRY
2101 Cedar Springs Road
Suite 1000
Dallas, TX 75201
(214) 888-4848 (telephone)
(214) 888-4849 (fax)

CERTIFICATE OF SERVICE
I certify that today, August 19, 2019, I caused the foregoing document to be
electronically filed with the Clerk of the Court for the U.S. Court of Appeals for
the Federal Circuit using the appellate CM/ECF system. All participants in the
case are registered CM/ECF users and will be served by the appellate CM/ECF
system.
August 19, 2019 /s/ Jeffrey A. Lamken

CERTIFICATE OF COMPLIANCE
1. This document complies with the type-volume limitation of Fed. R. App. P.
27(d)(2)(A) because this document contains 3,543 words, excluding the
parts exempted by Fed. R. App. P. 27(d)(2) and Fed. R. App. P. 27(a)(2)(B).
2. This document complies with the typeface requirements of Fed. R. App. P.
32(a)(5) and the type style requirements of Fed. R. App. P. 32(a)(6) because
this document has been prepared in a proportionally spaced typeface using
Microsoft Word in Times New Roman 14 point font.
August 19, 2019 /s/ Jeffrey A. Lamken

Transport Room 2

Diunggah oleh

Informasi Dokumen

Hak Cipta

Format Tersedia

Bagikan dokumen Ini

Bagikan atau Tanam Dokumen

Opsi Berbagi

Apakah menurut Anda dokumen ini bermanfaat?

Apakah konten ini tidak pantas?

Hak Cipta:

Format Tersedia

Transport Room 2

Diunggah oleh

Hak Cipta:

Format Tersedia

Case: 18-1197 Document: 103 Page: 1 Filed: 08/19/2019

United States Court of Appeals

CISCO SYSTEMS, INC.,

OPPOSITION OF VIRNETX INC. AND LEIDOS, INC. TO

Bradley Wayne Caldwell Jeffrey A. Lamken

Counsel for VirnetX Inc.

Counsel for the:

2. Name of Real Party in interest 3. Parent corporations and

8/19/2019 /s/ Jeffrey A. Lamken

Please Note: All questions must be answered Jeffrey A. Lamken

cc: All counsel of record

Counsel for the:

2. Name of Real Party in interest 3. Parent corporations and

8/19/2019 /s/ Donald Urrabazo

Please Note: All questions must be answered Donald Urrabazo

cc: All counsel of record

I. Three Trials Result in Three Verdicts for VirnetX—and Decisions

A. Proceedings Leading to This Appeal ...................................................2

B. Apple Repeatedly Seeks To Stay or Stall Court Proceedings

C. This Court Summarily Affirms—But Apple Seeks Rehearing,

D. The Court Denies Rehearing—and Rejects Apple’s Collateral

II. The Current Motions ........................................................................................7

I. Apple’s Request To Stay the Mandate and These Proceedings

II. Apple Has Failed To Justify a Stay of the Mandate Pending

III. Apple’s Request for a Stay of the Mandate Pending Resolution

Philip Morris USA Inc. v. Scott,

Teva Pharms. USA, Inc. v. Sandoz, Inc.,

VirnetX Inc. v. Cisco Sys., Inc.,

VirnetX, Inc. v. Cisco Sys., Inc.,

STATUTES & RULES

35 U.S.C. § 282(b)(3) ............................................................................................... 10

Fed. R. App. P. 41(a) ............................................................................................... 15

Fed. R. App. P. 41(b) ................................................................................................. 2

Fed. R. App. P. 41(d)(1).................................................................................2, 11, 12

Fed. Cir. R. 35(b)(2)................................................................................................. 14

Fed. Cir. R. 40(a)(4) ................................................................................................. 14

Fed. Cir. R. 41 .......................................................................................................... 11

Shapiro et al., Supreme Court Practice

and then cite them as grounds for a stay.

simultaneously deny the motion to stay the mandate as well.1

I. THREE TRIALS RESULT IN THREE VERDICTS FOR VIRNETX—AND

A. Proceedings Leading to This Appeal

finding of validity, but vacated the infringement verdict as to FaceTime and

1308, 1313-14 (Fed. Cir. 2014) (“VirnetX I ”).

Appx14. It also awarded damages for Apple’s infringement as to both VPN on

B. Apple Repeatedly Seeks To Stay or Stall Court Proceedings

In the meantime, Apple and associated parties filed multiple proceedings

seeking to invalidate VirnetX’s patents at the PTO. Eventually, VirnetX appealed

challenged claims of the ’135 and ’151 Patents.

cancellation of all asserted claims, foreclosing further proceedings in this case (a

C. This Court Summarily Affirms—But Apple Seeks Rehearing,

332 (Fed. Cir. 2019) (“VirnetX II ”).

computation of pre-judgment interest. Apple also used its rehearing petition as a

unpatentability as to some asserted claims, it reversed as to others. In case No. 18-

Lendenmann reference disclosed the “authentication” requirement of claims 5, 12,

remanded for further proceedings. Id.

Apple’s Supplemental Brief. After this Court’s decision in No. 18-1751

preclusive effect” of the decision in No. 18-1751—which affirmed unpatentability

findings as to certain claims of the ’504 Patent—required holding claims of the

appeals and any follow-on proceedings—effectively a seventh stay motion. Id. at

14. VirnetX filed supplemental briefs in response, explaining why collateral

1591 ECF No. 105.

D. The Court Denies Rehearing—and Rejects Apple’s Collateral

The Court specifically addressed the arguments Apple made in its