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> In a decision issued on Friday, U.S. District Judge Robert Schroeder in Tyler, Texas rejected Apple’s request ... that ... jurors should have been told the U.

> In a decision issued on Friday, U.S. District Judge Robert Schroeder in Tyler, Texas rejected Apple’s request ... that ... jurors should have been told the U.S. Patent and Trademark Office had deemed VirnetX’s claims “unpatentable.” If the USPTO deemed them unpatentable, where did the patents come from?

mikeyouse 6y ago
Looks like it's a concurrent case that Apple is pursuing, so VirnetX were granted the patents and sued Apple on that behalf. Apple is fighting this patent infringement lawsuit, and at the same time, seeking to invalidate the patents in a separate case in front of the US PTO: > Apple contends that it is entitled to a new trial because the Court excluded evidence from parallel PTO proceedings. Docket No. 775 at 39. Apple suggests that the fact that the PTO has issued final written decisions finding each claim unpatentable over the prior art is relevant to damages. > The Court is not persuaded that exclusion of the PTO proceedings warrants a new trial. VirnetX’s appeals of those proceedings are ongoing, and none of the asserted claims has been cancelled. It is particularly unclear what probative value the PTO proceedings have in light of the fact that invalidity is not an issue in this case. > To the extent Apple argues the decisions are relevant to damages, the relevance of the decisions is minimal because a number of the “decisions” cited in Apple’s offer of proof2 on PTO proceedings were issued afterthe parties’ alleged hypothetical negotiation date of September 2013. Compare Docket No. 721 at 18 (“If infringement is found, the date of the hypothetical negotiation would be September 2013, when the redesigned versions of VPN on Demand and FaceTime were released.”), with Docket No. 692 (Apple’s offer of proof). > Apple suggests that the evidence would have been relevant to the utility and advantages of the patented property over old modes or devices. Id. But, contrary to its assertions, Apple was not precluded from introducing evidence that the claimed invention “has no utility or advantages over old modes or devices.” Id. The Court only prohibited the use of the PTO proceedings, and Apple was free to present whatever evidence relating to Georgia-Pacific factors 9 and 10 it so chose. > Apple is not entitled to a new trial on this basis. Page 36 here: https://patentlyo.com/media/2018/09/Apple500MLoss.pdf https://patentlyo.com/media/2018/09/Apple500MLoss.pdf
- monocasa 6y ago
  > It is particularly unclear what probative value the PTO proceedings have in light of the fact that invalidity is not an issue in this case. How can invalidity possibly not be a factor?
  - AnimalMuppet 6y ago
    Because it's the Eastern District of Texas.
  - thaumasiotes 6y ago
    Perhaps because "none of the asserted claims has been cancelled"? It isn't clear to me, from what was quoted above, whether Apple successfully got a bunch of other VirnetX patent claims cancelled (but not the claims asserted here), or whether Apple successfully challenged the claims asserted here, but they haven't been officially "cancelled" yet.
- r00fus 6y ago
  The field of patent law seems to go against reason all the time. I'm so glad I don't deal with that scene anymore.

mikeyouse 6y ago

Looks like it's a concurrent case that Apple is pursuing, so VirnetX were granted the patents and sued Apple on that behalf. Apple is fighting this patent infringement lawsuit, and at the same time, seeking to invalidate the patents in a separate case in front of the US PTO: > Apple contends that it is entitled to a new trial because the Court excluded evidence from parallel PTO proceedings. Docket No. 775 at 39. Apple suggests that the fact that the PTO has issued final written decisions finding each claim unpatentable over the prior art is relevant to damages. > The Court is not persuaded that exclusion of the PTO proceedings warrants a new trial. VirnetX’s appeals of those proceedings are ongoing, and none of the asserted claims has been cancelled. It is particularly unclear what probative value the PTO proceedings have in light of the fact that invalidity is not an issue in this case. > To the extent Apple argues the decisions are relevant to damages, the relevance of the decisions is minimal because a number of the “decisions” cited in Apple’s offer of proof2 on PTO proceedings were issued afterthe parties’ alleged hypothetical negotiation date of September 2013. Compare Docket No. 721 at 18 (“If infringement is found, the date of the hypothetical negotiation would be September 2013, when the redesigned versions of VPN on Demand and FaceTime were released.”), with Docket No. 692 (Apple’s offer of proof). > Apple suggests that the evidence would have been relevant to the utility and advantages of the patented property over old modes or devices. Id. But, contrary to its assertions, Apple was not precluded from introducing evidence that the claimed invention “has no utility or advantages over old modes or devices.” Id. The Court only prohibited the use of the PTO proceedings, and Apple was free to present whatever evidence relating to Georgia-Pacific factors 9 and 10 it so chose. > Apple is not entitled to a new trial on this basis. Page 36 here: https://patentlyo.com/media/2018/09/Apple500MLoss.pdf https://patentlyo.com/media/2018/09/Apple500MLoss.pdf

monocasa 6y ago
> It is particularly unclear what probative value the PTO proceedings have in light of the fact that invalidity is not an issue in this case. How can invalidity possibly not be a factor?
- AnimalMuppet 6y ago
  Because it's the Eastern District of Texas.
- thaumasiotes 6y ago
  Perhaps because "none of the asserted claims has been cancelled"? It isn't clear to me, from what was quoted above, whether Apple successfully got a bunch of other VirnetX patent claims cancelled (but not the claims asserted here), or whether Apple successfully challenged the claims asserted here, but they haven't been officially "cancelled" yet.
r00fus 6y ago
The field of patent law seems to go against reason all the time. I'm so glad I don't deal with that scene anymore.