Case: 17-1368 Document: 56 Page: 1 Filed: 05/09/2018

1(202) 551-1792
igortimofeyev@paulhastings.com

May 9, 2018

VIA ECF

Peter R. Marksteiner
Circuit Executive and Clerk of Court
U.S. Court of Appeals for the Federal Circuit
717 Madison Place, N.W.
Washington, D.C. 20439

Re: VirnetX Inc. v. The Mangrove Partners Master Fund, Ltd., Apple Inc., No. 17-1368;
VirnetX Inc. v. The Mangrove Partners Master Fund, Ltd., Apple Inc., Black Swamp
IP, LLC, No. 17-1383 — Letter of Supplemental Authority

Dear Col. Marksteiner:

In its opening brief (Br. 65), Appellant VirnetX Inc. urged this Court to await the Supreme
Court’s guidance on the constitutionality of inter partes review. Pursuant to Federal Rule of
Appellate Procedure 28(j), VirnetX now respectfully submits this letter regarding the Supreme
Court’s decision in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, No. 16-712
(U.S. Apr. 24, 2018).

In Oil States, the Supreme Court held that the use of inter partes review to revoke
certain patents does not violate Article III or the Seventh Amendment. Op. 1. “Emphasiz[ing]
the narrowness of [the] holding,” however, the Supreme Court recognized that “retroactive[ly]”
applying inter partes review to patents issued when “that procedure was not in place” may raise
constitutional concerns. Op. 16-17.

Moreover, Oil States casts such retroactive applications into serious constitutional doubt.
The Supreme Court explained that patents confer “property right[s]” qualified by “the express
provisions of the Patent Act.” Op. 11. The Court distinguished its prior decisions stating that
only the courts may invalidate patents on the ground that the earlier version of the Patent Act
“did not include any provision for post-issuance administrative review.” Op. 11. By contrast, the
current Patent Act expressly includes “the qualification that the PTO has ‘the authority to
reexamine—and perhaps cancel—a patent claim’ in an inter partes review.” Op. 9. The Court
therefore upheld the constitutionality of proceedings before it on the premise that Congress,
when issuing the patents, had “reserve[d]” the authority to revoke them administratively “in an
inter partes review.” Op. 9; see also Op. 16-17.

The Supreme Court’s decision thus does not resolve the constitutionality of using inter
partes review to extinguish the patents at issue, especially where Article III courts rejected an
invalidity challenge based on the same prior art. At the time VirnetX’s patents issued, the
“express provisions of the Patent Act” did not make patents revocable through inter partes
 Case: 17-1368 Document: 56 Page: 2 Filed: 05/09/2018

Peter R. Marksteiner
May 9, 2018
Page 2

review. See Op. 2; Appx97; Appx169. Subjecting VirnetX’s vested patent rights to a new
qualification—possible cancelation by a newly constituted, non-Article III body operating under
different rules and procedures—presents a constitutional concern.

Respectfully submitted,

/s/ Igor V. Timofeyev

Igor V. Timofeyev

Counsel for Appellant VirnetX Inc.

cc: Counsel of Record (via ECF)

 Case: 17-1368 Document: 56 Page: 3 Filed: 05/09/2018

CERTIFICATE OF SERVICE

I hereby certify that I filed the foregoing document with the Clerk of the

United States Court of Appeals for the Federal Circuit via the CM/ECF system this

9th day of May, 2018, and also served a copy on counsel of record via the

CM/ECF system.

Date: May 9, 2018 BY: /s/Igor V. Timofeyev

Igor V. Timofeyev
Paul Hastings LLP
875 15th Street, N.W.
Washington, D.C. 20005
Tel.: (202) 551-1700
Fax: (202) 551-1705
Email: igortimofeyev@paulhastings.com