NOTE: This disposition is nonprecedential.
`
`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`VIRNETX INC., LEIDOS, INC., FKA SCIENCE
`APPLICATIONS INTERNATIONAL
`CORPORATION,
`Plaintiffs-Appellees
`
`v.
`
`APPLE INC.,
`Defendant-Appellant
`
`- - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - -- - - - - - - - - - -
`
`VIRNETX INC.,
`Plaintiff-Appellee
`
`v.
`
`APPLE INC.,
`Defendant-Appellant
`______________________
`
`2019-1050
`______________________
`
`Appeal from the United States District Court for the
`Eastern District of Texas in Nos. 6:11-cv-00563-RWS, 6:12-
`cv-00855-RWS, Judge Robert Schroeder, III.
`______________________
`
`Decided: November 22, 2019
`
`

`

`2
`
`VIRNETX INC. v. APPLE INC.
`
`______________________
`
`JEFFREY A. LAMKEN, MoloLamken LLP, Washington,
`DC, argued for all plaintiffs-appellees. Plaintiff-appellee
`VirnetX Inc. also represented by JAMES A. BARTA, MICHAEL
`GREGORY PATTILLO, JR., LUCAS M. WALKER, RAYINER
`HASHEM; ALLISON MILEO GORSUCH, Chicago, IL; LAUREN F.
`DAYTON, JENNIFER ELIZABETH FISCHELL, New York, NY;
`BRADLEY WAYNE CALDWELL, JASON DODD CASSADY, JOHN
`AUSTIN CURRY, Caldwell Cassady & Curry, Dallas, TX.
`
` DONALD SANTOS URRABAZO, Urrabazo Law, P.C., Los
`Angeles, CA, for plaintiff-appellee Leidos, Inc.
`
` WILLIAM F. LEE, Wilmer Cutler Pickering Hale and
`Dorr LLP, Boston, MA, argued for defendant-appellant.
`Also represented by MARK CHRISTOPHER FLEMING, LAUREN
`B. FLETCHER; THOMAS GREGORY SPRANKLING, Palo Alto,
`CA; BRITTANY BLUEITT AMADI, Washington, DC.
` ______________________
`
`Before LOURIE, MAYER, and TARANTO, Circuit Judges.
`TARANTO, Circuit Judge.
`VirnetX Inc. and Leidos, Inc. (together, VirnetX)
`brought this case against Apple Inc., alleging that Apple
`infringed four VirnetX patents. The district court entered
`summary judgment for VirnetX on invalidity, determining
`that Apple was precluded from pressing its proposed inva-
`lidity challenges because of previous litigation between the
`parties. A jury found for VirnetX on infringement and
`awarded roughly $503 million as a reasonable royalty,
`equal to a rate of $1.20 for each device whose sale by Apple
`infringed. The district court denied Apple’s post-trial mo-
`tion for judgment as a matter of law and entered a final
`judgment for VirnetX.
`
`

`

`VIRNETX INC. v. APPLE INC.
`
`3
`
`Apple appeals. We affirm the district court’s determi-
`nation that Apple is precluded by the prior litigation from
`pressing its proposed invalidity challenges. We affirm the
`judgment of infringement as to two of the patents but re-
`verse as to two others. In light of our partial reversal on
`infringement, we vacate the damages award and remand
`for the district court to consider whether it can and should
`enter a revised award without conducting a new trial and,
`if not, to hold a new trial limited to damages.
`I
`A
`VirnetX owns U.S. Patent Nos. 6,502,135, 7,418,504,
`
`7,490,151, and 7,921,211, the patents asserted in this case.
`Those patents are related to and claim improvements over
`VirnetX’s U.S. Patent No. 7,010,604, which is not at issue
`in this appeal. The ’604 patent describes Virtual Private
`Network (VPN) techniques for securely and privately
`transmitting communications over public networks. In
`particular, it describes a method in which a data packet is
`sent through a randomized series of servers before reach-
`ing its final destination. ’604 patent, col. 3, lines 3–12. An
`intermediate server in the series may send the packet to its
`final destination or to another randomly selected server,
`subject to the constraint that each packet must stop at a
`minimum number of intermediate servers before being
`sent to its final destination. Id., col. 3, lines 29–37. The
`recipient’s identity is thereby obscured, enhancing privacy.
`
`The ’135, ’151, ’504, and ’211 patents claim improve-
`ments of existing VPN methods, such as the ’604 patent’s
`method. The parties group the ’135 and ’151 patents to-
`gether and the ’504 and ’211 patents together.
`The ’135 patent teaches a method of automatically es-
`tablishing a VPN in response to a domain name inquiry.
`’135 patent, col. 47, lines 20–32. Claim 1 is representative
`of the asserted claims of the ’135 patent:
`
`

`

`4
`
`VIRNETX INC. v. APPLE INC.
`
`1. A method of transparently creating a virtual pri-
`vate network (VPN) between a client computer and
`a target computer, comprising the steps of:
`(1) generating from the client computer a Do-
`main Name Service (DNS) request that re-
`quests an IP [internet protocol] address
`corresponding to a domain name associated
`with the target computer;
`(2) determining whether the DNS request
`transmitted in step (1) is requesting access to a
`secure website; and
`(3) in response to determining that the DNS re-
`quest in step (2) is requesting access to a secure
`target web site, automatically initiating the
`VPN between the client computer and the tar-
`get computer.
`Id.; see also ’151 patent, col. 48, lines 18–29 (claim 13). The
`’151 patent issued from a divisional of the ’135 patent’s ap-
`plication, so the two patents share a specification.
`Whereas the ’135 patent recites a method claim, the ’151
`patent recites a “computer readable medium” capable of ex-
`ecuting a set of instructions. ’151 patent, col. 48, lines 18–
`29. Claim 13 is the only asserted claim of the ’151 patent:
`13. A computer readable medium storing a domain
`name server (DNS) module comprised of computer
`readable instructions that, when executed, cause a
`data processing device to perform the steps of:
`(i) determining whether a DNS request sent by
`a client corresponds to a secure server;
`(ii) when the DNS request does not correspond
`to a secure server, forwarding the DNS request
`to a DNS function that returns an IP address
`of a nonsecure computer; and
`
`

`

`VIRNETX INC. v. APPLE INC.
`
`5
`
`(iii) when the intercepted DNS request corre-
`sponds to a secure server, automatically creat-
`ing a secure channel between the client and the
`secure server.
`
`Id.
`The ’504 patent and the ’211 patent make up the sec-
`ond group of patents at issue in this case. The ’504 patent,
`which issued from a continuation-in-part of the ’135 pa-
`tent’s application, describes certain logistical aspects of a
`secure communication link between computer nodes, in-
`cluding a repository of names and network addresses. ’504
`patent, col. 55, lines 49–56. Claim 1 is representative of
`the asserted claims of the ’504 patent:
`1. A system for providing a domain name service
`for establishing a secure communication link, the
`system comprising:
`A domain name service system configured to be
`connected to a communication network, to
`store a plurality of domain names and corre-
`sponding network addresses, to receive a query
`for a network address, and to comprise an indi-
`cation that the domain name service system
`supports establishing a secure communication
`link.
`Id.; see also ’211 patent, col. 57, lines 38–46 (claim 36). The
`’211 patent issued from a continuation of the ’504 patent’s
`application, so the two patents share a specification.
`Whereas the ’504 patent recites a system claim, the ’211
`patent claims a “machine-readable medium” comprising in-
`structions for establishing the system. ’211 patent, col. 57,
`lines 38–46.
`
`B
`Apple designs and sells mobile devices. Over time, var-
`
`ious such devices have used different versions of Apple’s
`
`

`

`6
`
`VIRNETX INC. v. APPLE INC.
`
`iOS operating system. Many of the devices at issue here
`included a VPN on Demand application. All the devices at
`issue included a FaceTime application.
`VPN on Demand allows an Apple device to communi-
`cate with a secure website, generally one hosted by a pri-
`vate server and protected by a firewall, by establishing a
`VPN between the device and the private server. Before Ap-
`ple released iOS 7, VPN on Demand had two modes of op-
`eration: “Always” and “If Needed.” For both modes, a user
`created a list of websites, indicated by domain names, that
`the user wanted to be able to access, at least some of the
`time, through a VPN. If the user selected “Always” mode,
`VPN on Demand established a VPN connection any time
`the user requested access to a domain name on the list. By
`contrast, if the user selected “If Needed” mode, VPN on De-
`mand first attempted to connect to any requested website,
`including one on the list, without a VPN; only if the request
`failed—commonly, because a firewall stopped the re-
`quest—did VPN on Demand establish a VPN.
`
`FaceTime allows Apple devices to have secure audio
`and video communication sessions (calls) between devices
`in which the FaceTime application is installed. Before Ap-
`ple released iOS 7, a user (the caller) initiated a FaceTime
`call by selecting another user (the receiver) from the
`caller’s list of contacts. The calling device constructed a
`message—containing the calling device’s IP address and
`certificate, the receiving device’s Apple ID, and a push to-
`ken—and sent that message to a dedicated FaceTime
`server. When the FaceTime server received the message,
`it used the calling device’s certificate to confirm that the
`calling device was registered with FaceTime and used the
`receiving device’s Apple ID to obtain the receiving device’s
`IP address. Then, the server constructed a message with
`information about the calling device—its IP address and a
`session token—and sent that message to the receiving de-
`vice. If the receiver accepted the call, the receiving device
`constructed a new message containing information about
`
`

`

`VIRNETX INC. v. APPLE INC.
`
`7
`
`itself—its IP address, its certificate, a push token, and a
`session token—and sent that message back to the
`FaceTime server. Finally, the FaceTime server sent the
`receiving device’s IP address and certificate to the calling
`device, which allowed the two devices to establish a secure
`communication.
`
`C
`In 2010, VirnetX sued Apple for patent infringement
`
`based on Apple’s use and sale of mobile devices running on
`iOS (the “417” litigation, reflecting the district court’s
`docket number). VirnetX relied on the “Always” mode of
`VPN on Demand to allege that Apple infringed the ’135 and
`’151 patents and on FaceTime to allege that Apple in-
`fringed the ’504 and ’211 patents. Apple counterclaimed
`that each asserted claim was invalid. The case proceeded
`toward trial and in September 2012, VirnetX and Apple
`submitted a proposed joint final pretrial order. In that or-
`der, Apple indicated that it intended to press several inva-
`lidity theories at trial: anticipation, obviousness, written
`description, enablement, derivation, double patenting, and
`non-joinder of an alleged co-inventor. Apple submitted nu-
`merous prior-art references and extensive expert reports
`on invalidity. On October 22, 2012, the district court
`granted VirnetX partial summary judgment rejecting the
`derivation and non-joinder challenges. J.A. 25476, 25486.
` On October 25, 2012, a week before trial was set to
`begin, Apple filed a motion to voluntarily dismiss the re-
`mainder of its invalidity counterclaims. J.A. 25487–90.
`The district court denied Apple’s motion. See J.A. 25591–
`92. Then, at trial, Apple informed the court that it would
`present only one invalidity challenge—an anticipation
`challenge based on a 1996 article by Takahiro Kiuchi and
`Shigekoto Kaihara (Kiuchi). Thereafter, the court entered
`judgment as a matter of law rejecting all of Apple’s other
`invalidity counterclaims.
`
`

`

`8
`
`VIRNETX INC. v. APPLE INC.
`
` On November 6, 2012, a jury found that Apple had in-
`fringed all asserted claims. The jury also found that Apple
`had failed to establish by clear and convincing evidence
`that the claims were anticipated by Kiuchi. Based on Vir-
`netX’s evidence at trial, the jury awarded VirnetX
`$368,160,000 as a reasonable royalty for Apple’s use of Vir-
`netX’s inventions.
`
`D
`On the day the jury returned a verdict in the 417 liti-
`gation, VirnetX filed the present infringement action
`against Apple. This case (the “855” litigation, again reflect-
`ing the district court’s docket number) involves redesigned
`versions of VPN on Demand and FaceTime.
`The redesigned version of VPN on Demand, found in
`iOS 7 and later versions of iOS, replaced the “Always” and
`“If Needed” modes with different sets of rules defining op-
`tions for the user. One of the new features, “EvaluateCon-
`nection,” is similar to the “Always” mode. To operate
`“EvaluateConnection,” a user puts into the “Domains” list
`websites for which the user desires a secure connection.
`Later, when the user enters a domain name in a standard
`web browser, VPN on Demand checks whether the name is
`on the “Domains” list. Whereas the “Always” mode would
`have established a VPN connection at this step, “Evaluate
`Connection” causes the redesigned version to go through
`additional steps. Before establishing a VPN, the rede-
`signed version sends a domain name request to the local
`domain name server on the network to which the device is
`connected. If this request fails, and the user has enabled
`the “ConnectIfNeeded” option—one of the choices within
`the “EvaluateConnection” feature—VPN on Demand es-
`tablishes a VPN. But if the request succeeds, VPN on De-
`mand does not establish a VPN. Evidence at trial
`explained the logic: whether a VPN is necessary for a se-
`cure connection turns on the user device’s “location” vis-à-
`vis a private network. In particular, a failed request for
`
`

`

`VIRNETX INC. v. APPLE INC.
`
`9
`
`the IP address of a server hosted on a private network in-
`dicates that the user device is outside that private network,
`so a VPN is required for secure, private communications;
`in contrast, a successful request for such a server’s IP ad-
`dress indicates that the user device is inside the private
`network and thus does not need a VPN for secure, private
`communications.
`
`The redesigned version of FaceTime operates in largely
`the same way as the earlier version already found to in-
`fringe, but with one change that Apple contends is signifi-
`cant to the question of infringement of the ’504 and ’211
`patents. In the redesigned version, the final message from
`the FaceTime server to the calling device does not include
`the receiving device’s IP address. Because the receiving
`device knows the address of the calling device but not vice
`versa, the receiving device must initiate the communica-
`tion through what Apple calls the “ICE protocol.” The re-
`ceiving device sends encrypted data packets to the calling
`device, and those data packets include the receiving de-
`vice’s IP address. Once the calling device decrypts the data
`packets, the two devices can establish a secure communi-
`cation.
`
`In the 855 litigation before us, Apple again counter-
`claimed that the asserted patents are invalid under 35
`U.S.C. §§ 101, 102, 103, and 112. In August 2014, the dis-
`trict court granted VirnetX’s motion for summary judg-
`ment on Apple’s invalidity counterclaims. J.A. 5–9. The
`district court held that issue preclusion prevented Apple
`from pursuing its invalidity challenges because Apple had
`already lost on the invalidity challenges in the 417 litiga-
`tion. The only invalidity challenges Apple places in issue
`on appeal are obviousness and non-joinder of an alleged co-
`inventor. Brief for Appellant at 58; Reply Brief at 25.
`
`In April 2018, a jury found that Apple’s redesigned ver-
`sion of VPN on Demand infringed all asserted claims of the
`’135 and ’151 patents and that Apple’s redesigned version
`
`

`

`10
`
`VIRNETX INC. v. APPLE INC.
`
`of FaceTime infringed all asserted claims of the ’504 and
`’211 patents. Based on VirnetX’s evidence at trial, the jury
`awarded VirnetX $502,567,709 as a reasonable royalty for
`Apple’s use and sale of VirnetX’s inventions. Apple filed a
`motion for judgment as a matter of law, and the district
`court denied the motion and entered judgment for VirnetX.
`
`Apple timely appealed to this court. We have jurisdic-
`tion pursuant to 28 U.S.C. § 1295(a)(1).
`II
` We review the district court’s ruling on issue preclusion
`de novo, following the Fifth Circuit. Wills v. Arizon Struc-
`tures Worldwide, LLC, 824 F.3d 541, 545 (5th Cir. 2016);
`Voter Verified, Inc. v. Election Systems & Software LLC,
`887 F.3d 1376, 1382 (Fed. Cir. 2018) (applying regional cir-
`cuit law). We review the grant of summary judgment de
`novo and apply the “same criteria employed by the district
`court.” Waste Mgmt. of Louisiana, L.L.C. v. River Birch,
`Inc., 920 F.3d 958, 964 (5th Cir. 2019); Eli Lilly & Co. v.
`Hospira, Inc., 933 F.3d 1320, 1327 (Fed. Cir. 2019) (apply-
`ing regional circuit law). We review the denial of a motion
`for judgment as a matter of law de novo and ask whether
`the underlying jury findings were supported by substantial
`evidence. See Apache Deepwater, L.L.C. v. W&T Offshore,
`Inc., 930 F.3d 647, 652–53 (5th Cir. 2019); Elbit Systems
`Land & C4I Ltd. v. Hughes Network Systems, LLC, 927
`F.3d 1292, 1296 (Fed. Cir. 2019) (following Fifth Circuit
`law). We review a claim construction de novo and any un-
`derlying factual findings based on extrinsic evidence for
`clear error. Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S.
`Ct. 831, 841 (2015).
`
`A
` We begin with Apple’s challenge to the district court’s
`conclusion that, because of what transpired in the earlier
`417 litigation, issue preclusion bars Apple from presenting
`the invalidity challenges it raised in this litigation—
`
`

`

`VIRNETX INC. v. APPLE INC.
`
`11
`
`specifically, an obviousness challenge and a non-joinder
`challenger. We agree with the district court. We follow
`regional circuit law on the non-patent-specific matter of
`whether issue preclusion’s requirement of “actual litiga-
`tion” is satisfied when, in an earlier case, the party has
`taken a vigorously contested claim through extensive dis-
`covery all the way to trial, then lost on the issue after
`choosing not to present evidence on it. See Voter Verified,
`887 F.3d at 1382–83 (applying regional circuit’s law to non-
`patent-specific aspect of preclusion law).
`
`The doctrine of issue preclusion prevents “successive
`litigation of an issue of fact or law actually litigated and
`resolved in a valid court determination essential to the
`prior judgment, whether or not the issue arises on the same
`or a different claim.” New Hampshire v. Maine, 532 U.S.
`742, 748–49 (2001). Only the requirement of actual litiga-
`tion and resolution is contested here. We conclude that
`each of the invalidity challenges Apple now asserts was ac-
`tually litigated and resolved in the 417 litigation. We
`therefore affirm the district court’s determination that Ap-
`ple is precluded from raising these invalidity challenges in
`the present case.
`
`In the 417 litigation, Apple asserted that VirnetX’s four
`patents are invalid based on 35 U.S.C. §§ 101, 102, 103,
`and 112. See, e.g., Apple’s Answer, Affirmative Defenses,
`and Counterclaims to Plaintiff’s Third Amended Complaint
`at 9, Dkt. # 257 (Apr. 16, 2012). Just a month before trial,
`moreover, after extensive discovery and the submission of
`expert reports, the parties jointly submitted a pretrial or-
`der. Apple there continued to assert invalidity challenges
`based on anticipation, obviousness, written description, en-
`ablement, double patenting, derivation, and non-joinder.
`J.A. 25452–53 (pretrial order).
`The district court granted summary judgment rejecting
`Apple’s non-joinder challenge (along with its derivation
`challenge). J.A. 25476, 25486. Although Apple then tried
`
`

`

`12
`
`VIRNETX INC. v. APPLE INC.
`
`to voluntarily dismiss the remaining invalidity challenges
`without prejudice on the eve of trial, the district court de-
`nied the request, telling Apple that it could dismiss those
`challenges only with prejudice. J.A. 25591–92. Apple de-
`clined to do so, and the invalidity challenges (besides non-
`joinder and derivation) were still alive when trial began.
`J.A. 25592. At trial, Apple informed the district court and
`VirnetX that it intended to present only an anticipation
`claim based on the Kiuchi reference. J.A. 25980. When the
`district court asked Apple if this decision meant that Apple
`was “dismissing” the rest of its invalidity claims, VirnetX
`interjected and reminded the district court that Apple’s de-
`cision not to pursue the other claims at trial did not mean
`that Apple could dismiss those claims. J.A. 25981. VirnetX
`informed the court that it would be “filing a JMOL on any
`theory that [Apple was] not going forward with.” J.A.
`25981–82. At the close of trial and after VirnetX formally
`submitted a motion for judgment as a matter of law, the
`court entered “judgment as a matter of law on theories of
`invalidity, other than anticipation over the Kiuchi refer-
`ences as to the asserted claims of the VirnetX patents.”
`J.A. 26113.
`
`The record just recited is one of actual litigation of the
`invalidity issues Apple now wants to raise. Apple contends
`otherwise, asserting that it did not “actually litigate” any
`invalidity challenge except anticipation by Kiuchi simply
`because it chose to present to the jury no evidence on any
`other invalidity issue. We disagree.
`A leading treatise states that, as a general rule, “pre-
`clusion applies to any issue framed by the pleadings and
`not withdrawn, even though it has not been raised at trial
`in any way.” 18A CHARLES ALAN WRIGHT ET AL., FEDERAL
`PRACTICE AND PROCEDURE § 4419 (3d ed.) (Wright and Mil-
`ler). The Fifth Circuit has concluded that an issue is “ac-
`tually litigated” when the “issue is raised and the party
`who has the burden fails in his proof and the issue is de-
`cided against him.” Santopadre v. Pelican Homestead &
`
`

`

`VIRNETX INC. v. APPLE INC.
`
`13
`
`Sav. Ass’n, 937 F.2d 268, 274 (5th Cir. 1991) (citing United
`States v. Silliman, 167 F.2d 607, 617 (3d Cir. 1948)). Here,
`in the 417 litigation, Apple asserted invalidity under 35
`U.S.C. §§ 101, 102, 103, and 112 from the outset, and the
`issues were extensively developed in discovery. Apple ex-
`pressly included a host of invalidity issues, as enumerated
`above, in the pretrial order, which “supersede[d] all prior
`pleadings” and governed the proceedings to come. Meaux
`Surface Protection, Inc. v. Fogleman, 607 F.3d 161, 167 (5th
`Cir. 2010); see In re Pirani, 824 F.3d 483, 493 n.1 (5th Cir.
`2016). That framing of the issues in the trial-governing
`pleadings, together with full pretrial engagement on the is-
`sues and the eventual judicial rulings resolving the issues
`based on evidentiary insufficiency, is enough to constitute
`actual litigation.
`Preclusion in this scenario serves important interests
`protected by preclusion principles. One is the judicial sys-
`tem’s interest in avoiding duplication caused by an earlier
`bypassing of a present and adequate opportunity for con-
`clusive resolution after fully prepared development of the
`issue. Another is the related reliance interest of the oppos-
`ing party: “once an issue has been framed, the opposing
`party has a right to rely on the expectation that it will be
`resolved conclusively in that action.” Wright and Mil-
`ler § 4419. When the adversarial litigation of the issue has
`proceeded as far as it did in the 417 matter, preclusion
`serves the interests in “conserving judicial resources” and
`“avoiding oppression or harassment of the adverse party.”
`Restatement (Second) of Judgments § 27 comment e.
`Here, VirnetX expended “considerable effort . . . in pre-
`paring to meet a case that [was] never made” when the
`time came for presentation of evidence. Wright and Miller
`§ 4419. VirnetX prevailed by summary judgment on two of
`the invalidity issues, including non-joinder. Then, only one
`week before trial, Apple informed the district court and
`VirnetX, in an “Emergency Motion to Dismiss,” that it
`
`

`

`14
`
`VIRNETX INC. v. APPLE INC.
`
`would prefer not to pursue the remaining invalidity chal-
`lenges, but it proposed to dismiss them only if it could save
`them, unimpaired, for future litigation. J.A. 25487. In re-
`sponse, VirnetX explained to the court:
`VirnetX has spent well over a million dollars in this
`case defending the validity of the patents. There
`were more than 100 references asserted by Apple
`in this case in their invalidity contentions. We had
`to deal with all of those.
`We have had extensive motion practice in this
`Court on invalidity issues. We filed expert reports
`in this Court. We have taken depositions in this
`Court directed to invalidity.
`J.A. 25585–86. When the district court denied the motion
`to dismiss, Apple knew that the issues remained in the
`case. But Apple bypassed the opportunity to try the issues
`then and there, choosing to present no evidence on those
`issues. Judgment as a matter of law for failure of proof
`followed. Apple’s choice to present no evidence does not
`change the character of the judgment as a resolution of is-
`sues actually litigated.
`
`Apple relies for its contrary position on our decision in
`Voter Verified, but that decision did not hold that there is
`no actual litigation in a situation involving adversarial en-
`gagement on an issue as extensive in scope and duration,
`in a costly course of litigation, as the validity dispute in the
`417 matter. In Voter Verified, there had been an earlier
`case in which Voter Verified, Inc. sued Election Systems &
`Software LLC for patent infringement and Election Sys-
`tems counterclaimed that the asserted claims were invalid
`under §§ 101, 102, 103, and 112. 887 F.3d at 1379. But
`that was all Election Systems did in pressing the § 101
`counterclaim. Indeed, when Voter Verified moved for sum-
`mary judgment, “Election Systems failed to present any ar-
`guments or evidence regarding invalidity of these claims.”
`Id. In that circumstance, when Voter Verified sued
`
`

`

`VIRNETX INC. v. APPLE INC.
`
`15
`
`Election Systems a second time, we applied Eleventh Cir-
`cuit preclusion law to reject issue preclusion of a § 101 chal-
`lenge. In addition to concluding that Voter Verified had
`not shown that the § 101 ruling in the first case was neces-
`sary to the judgment in that case, we concluded that inva-
`lidity under § 101 was not “actually litigated” in the first
`case because the “district court disposed of the § 101 issue
`when Election Systems chose not to respond.” Id. at 1383.
`Voter Verified thus involved such a “feeble effort” at
`presenting an issue that the case could be characterized as
`not involving actual litigation of the issue. Wright and Mil-
`ler § 4419 n.11; see id. (calling Voter Verified a “close call”).
`How much litigation is enough to constitute actual litiga-
`tion for preclusion purposes requires some judgment calls,
`but Voter Verified occupies a place on the spectrum far from
`a true adversarial contest and only a step away from bare
`pleading followed by consensual resolution, which is distin-
`guished from actual litigation. See Restatement (Second)
`of Judgments § 27 Comment e. In the circumstances of
`Voter Verified, moreover, preclusion was not meaningfully
`supported by the policies of protecting the judicial system
`and opposing parties that weigh so heavily here.
`
`Apple also contends that the district court in the 417
`litigation never actually entered judgment on the invalid-
`ity defenses that Apple did not present to the jury. We dis-
`agree. Apple relies on the fact that, after the verdict in the
`417 litigation, VirnetX moved for “judgment against Apple
`on Apple’s late-abandoned counterclaims and defenses, in-
`cluding all of Apple’s alleged prior art references,” 417 liti-
`gation, Dkt. 625, and the district court, in denying the
`motion, said:
`The Court cannot and will not enter judgment upon
`claims and defenses that were not presented for
`consideration to the jury. There is no basis to enter
`such a judgment, no more than there is a basis to
`
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`16
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`VIRNETX INC. v. APPLE INC.
`
`enter judgment of non-infringement for Apple as to
`VirnetX’s unasserted claims.
`J.A. 22396. Apple effectively reads “defenses” as independ-
`ent from “claims” in relying on this passage to support its
`contention. We reject Apple’s argument.
`During the trial, as we have noted, the court had al-
`ready formally granted judgment on the invalidity defenses
`other than anticipation based on Kiuchi. See J.A. 25523
`(“Court granted” “Plaintiff’s JMOL on invalidity other than
`anticipation regarding Kiuchi”). The court did so after Vir-
`netX succeeded in persuading the district court not to per-
`mit Apple to dismiss its invalidity challenges voluntarily
`without prejudice, which would free Apple to reassert those
`challenges in future litigation. It is unreasonable to under-
`stand the district court as having suddenly reversed itself
`on those decisions. In any event, the mid-trial JMOL, to-
`gether with the pretrial partial summary judgment, stand
`as judgments on the challenges now at issue. The refusal
`to enter a further judgment does not undo those already-
`entered judgments.
`In context, the reference to “claims and defenses” must
`be understood as referring to the defenses Apple asserted
`against the patent claims that VirnetX ultimately excluded
`from its infringement assertions. Indeed, in responding to
`VirnetX’s motion, Apple noted that it was “not requesting
`to dismiss its invalidity claim in its entirety,” stating: “Ap-
`ple only seeks to dismiss those claims as to which VirnetX
`has not asserted infringement.” J.A. 25552 n.18. Moreo-
`ver, during the trial, after the district court had entered
`JMOL, Apple pointed out that VirnetX had initially “only
`asserted a subset of the claims,” had subsequently “limited
`those asserted claims to 18 claims,” and then had finally
`narrowed those claims even further at trial. J.A. 26122.
`The district court, in response, noted that it “ha[d] already
`granted [VirnetX’s] motion as to the asserted claims” but
`would “make note of [Apple’s] motion as to the unasserted
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`

`VIRNETX INC. v. APPLE INC.
`
`17
`
`claims and all of the patents” and would “take that under
`advisement.” J.A. 26122. The post-trial ruling that Apple
`now quotes is where the court addressed the unasserted
`claims.
`
`For the foregoing reasons, we affirm the district court’s
`determination that Apple is precluded from pressing the
`invalidity challenges it proposed to press in this case.
`B
` We next address Apple’s appeal of the finding of in-
`fringement of the ’151 and ’135 patents based on the rede-
`signed VPN on Demand software in the mobile devices
`Apple sold. The jury found that Apple infringed the
`method claims of the ’135 patent and the computer reada-
`ble medium claim of the ’151 patent by developing, testing,
`and selling to its customers—with detailed instructions
`about how to perform the method—mobile devices with
`VPN on Demand installed. We reject Apple’s challenges,
`conclude that the jury had substantial evidence to support
`its verdict, and affirm the judgment of infringement.
`1
`We affirm the judgment of infringement of the asserted
`claims of the ’135 patent.
`The record contains substantial evidence that the rede-
`signed version of VPN on Demand performs every step of
`the methods claimed in the asserted claims of the ’135 pa-
`tent. See J.A. 10079, 10114–21 (Apple’s guide for configur-
`ing VPN on Demand); J.A. 1328–52 (VirnetX’s expert
`testimony); J.A. 2343–47 (Apple’s expert testimony). Vir-
`netX used Apple’s configuration guide to show that the
`“EvaluateConnection” mode begins to operate when a user
`enters a domain name and, in response, the Apple device
`requests an IP address corresponding to that domain
`name. J.A. 10118–19; J.A. 1335. VPN on Demand “com-
`pares the requested domain against the domains listed in
`the Domains array,” thereby determining whether the
`
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`18
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`VIRNETX INC. v. APPLE INC.
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`request was for a secure website. J.A. 10118, 10120; see
`also J.A. 1335; J.A. 2345. If VPN on Demand finds that the
`requested domain is listed in the Domains array, it checks,
`by sending a request to a local DNS server, whether the
`user device is connected to the private network that hosts
`the requested website. J.A. 10121; J.A. 1335; J.A. 2344. If
`VPN on Demand determines that the user device is not con-
`nected to the private network, it automatically sets up a
`VPN between the user device and the website. J.A. 10121;
`J.A. 1335; J.A. 2344–45. Therefore, substantial evidence
`supports the