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Trials@uspto.gov
`Tel: 571-272-7822
`
`
`Paper 110
`Entered: July 14, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`THE MANGROVE PARTNERS MASTER FUND, LTD. and APPLE INC.,
`Petitioner,
`v.
`VIRNETX INC.,
`Patent Owner.
`Case IPR2015-01046
`Patent 6,502,135 B1
`________________________________________
`
`THE MANGROVE PARTNERS MASTER FUND, LTD., APPLE INC.,
`and BLACK SWAMP IP, LLC,
`Petitioner,
`v.
`VIRNETX INC.,
`Patent Owner.
`Case IPR2015-01047
`Patent 7,490,151 B2
`________________________________________
`
`
`Before SCOTT R. BOALICK, Chief Administrative Patent Judge.
`
`BOALICK, Chief Administrative Patent Judge.
`
`
`
`ORDER
`Lifting General Order
`
`
`
`
`
`

`

`IPR2015-01046 - Patent 6,502,135 B1
`IPR2015-01047 - Patent 7,490,151 B2
`
`
`On May 1, 2020, the Chief Judge issued a General Order regarding
`treatment of certain cases under Arthrex, Inc. v. Smith & Nephew, Inc.,
`941 F.3d 1320 (Fed. Cir. 2019). Paper 106.1 The General Order states that
`it applies to the above-captioned cases and that the Board will hold the cases
`in administrative abeyance pending Supreme Court action. Id. Following
`Petitioner’s request, the Board authorized briefing on whether to withdraw
`application of the General Order to these proceedings. Paper 107.
`Petitioner argues that these proceedings should not be subject to the
`General Order, which states that it applies to “cases remanded by the Federal
`Circuit under Arthrex,” because they were remanded over three months
`before that case was decided. Paper 108, 3. Petitioner argues additionally
`that because Patent Owner did not raise an Appointments Clause challenge
`before the Federal Circuit, the Board may not consider that issue within the
`scope of the Federal Circuit’s mandate. Id. at 4. Moreover, Petitioner
`reasons that Patent Owner has forfeited such a challenge by failing to raise it
`on appeal at the Federal Circuit. Id. (citing Customedia Techs., LLC v. Dish
`Network Corp., 941 F.3d 1173, 1174 (Fed. Cir. 2019) (“[Appellant] did not
`raise any semblance of an Appointments Clause challenge in its opening
`briefs . . . . Consequently, we must treat that argument as forfeited in these
`appeals.”)). Petitioner argues that the Board’s rehearing rules do not permit
`Patent Owner to raise an issue for the first time in a motion seeking
`rehearing. Id. at 5. Furthermore, the Board should reject Patent Owner’s
`challenge because, according to Petitioner, Arthrex is “limited to . . . final
`written decisions.” Id. (quoting Customedia, 941 F.3d at 1340). Finally,
`
`
`1 Citations are to the record of IPR2015-01046; similar papers appear in the
`record of IPR2015-01047.
`
`2
`
`

`

`IPR2015-01046 - Patent 6,502,135 B1
`IPR2015-01047 - Patent 7,490,151 B2
`
`Petitioner argues that the delay imposed by the General Order would
`unfairly prejudice Petitioner. Id. at 6.
`Patent Owner argues that the General Order properly applies to these
`proceedings because Patent Owner’s Arthrex challenge was properly raised.
`According to Patent Owner, Arthrex applies to all agency actions.
`Paper 109, 4-5. Patent Owner argues further that Petitioner waived its
`arguments, by failing to challenge Patent Owner’s Arthrex assertion when
`Petitioner opposed Patent Owner’s motion for rehearing. Id. at 5. Patent
`Owner argues that Customedia’s waiver holding does not prevent Patent
`Owner’s Arthrex argument here, because Patent Owner prevailed on other
`grounds in the appeal. Id. at 5–6. Finally, Patent Owner argues that
`removing this case from the General Order would unfairly prejudice Patent
`Owner, by relying on harm to a joined party alone. Id. at 6.
`Petitioner’s position is more persuasive. Patent Owner did not raise
`an Appointments Clause challenge in its appeal, and has therefore waived
`any such challenge in these proceedings. See Customedia, 941 F.3d 1174.
`Moreover, even if we were to consider Patent Owner to have preserved such
`a challenge, Arthrex does not apply to interlocutory orders such as the
`discovery order against which Patent Owner has asserted its Arthrex
`challenge. See Arthrex, 941 F.3d at 1340 (“Thus, we see the impact of this
`case as limited to those cases where final written decisions were issued and
`where litigants present an Appointments Clause challenge on appeal.”);
`Caterpillar Paving Prods. Inc. v. Wirtgen Am., Inc., 957 F.3d 1342, 1342–43
`(Fed. Cir. 2020) (noting that Arthrex applies only to final written decisions
`issued before Arthrex). Thus, these proceedings do not implicate the
`conditions for applying the General Order.
`
`3
`
`

`

`IPR2015-01046 - Patent 6,502,135 B1
`IPR2015-01047 - Patent 7,490,151 B2
`
`
`Accordingly, it is hereby ORDERED that these proceedings are no
`longer subject to the General Order and may proceed on their merits.
`
`
`
`4
`
`

`

`IPR2015-01046 - Patent 6,502,135 B1
`IPR2015-01047 - Patent 7,490,151 B2
`
`
`PETITIONER:
`Abraham Kasdan
`WIGGIN AND DANA LLP
`akasdan@wiggin.com
`
`James T. Bailey
`jtb@jtbaileylaw.com
`
`Jeffrey P. Kushan
`Thomas A. Broughan, III
`Scott M. Border
`SIDLEY AUSTIN LLP
`IPRNotices@sidley.com
`tbroughan@sidley.com
`sborder@sidley.com
`
`Thomas H. Martin
`Wesley C. Meinerding
`MARTIN & FERRARO, LLP
`tmartin@martinferraro.com
`docketing@martinferraro.com
`
`
`PATENT OWNER:
`Joseph E. Palys
`Naveen Modi
`Daniel Zeilberger
`Chetan Bansal
`PAUL HASTINGS LLP
`josephpalys@paulhastings.com
`naveenmodi@paulhastings.com
`danielzeilberger@paulhastings.com
`chetanbansal@paulhastings.com
`
`
`5
`
`

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