On February 4, 2016, the Patent Trial and Appeal Board instituted inter partes review of a patent asserted by VirnetX Inc. against Apple Inc. The petitioner, Black Swamp IP LLC, requested an IPR of U.S. Patent No. 7,490,151 and also requested joinder with an IPR filed by Mangrove Partners Master Fund, Ltd. that was instituted against the same patent.
The PTAB stated that it would institute the IPR for the same reasons it had instituted the IPR filed by Mangrove Partners Fund. The patent owner, VirnetX, argued that Black Swamp’s petition would prejudice VirnetX and accused Black Swamp’s petition of being “an attempt at extortion.” VirnetX also argued that allowing joinder would “tip the scale of resources” in favor of the petitioner. The PTAB was not persuaded by VirnetX’s arguments.
The day before the PTAB’s decision, a jury in the Eastern District of Texas awarded VirnetX a $625.6 million verdict against Apple in a case involving the ’151 patent and three other patents. The claims of the ’151 patent were asserted against Apple products with VPN on demand functionality.
Black Swamp IP LLC v. VirnetX Inc., IPR2016-00167 (PTAB Feb. 4, 2016) [Siu (opinion), Tierney, Easthom].