Case: 22-1523 Document: 77 Page: 1 Filed: 10/20/2023
`
`NOTE: This disposition is nonprecedential.
`
`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`VIRNETX INC.,
`Appellant
`
`v.
`
`APPLE INC.,
`Appellee
`
`KATHERINE K. VIDAL, UNDER SECRETARY OF
`COMMERCE FOR INTELLECTUAL PROPERTY
`AND DIRECTOR OF THE UNITED STATES
`PATENT AND TRADEMARK OFFICE,
`Intervenor
`______________________
`
`2022-1523
`______________________
`
`Appeal from the United States Patent and Trademark
`Office, Patent Trial and Appeal Board in No. 95/001,682.
`______________________
`
`Decided: October 20, 2023
`______________________
`
`IGOR VICTOR TIMOFEYEV, Paul Hastings LLP, Washing-
`ton, DC, argued for appellant. Also represented by
`STEPHEN BLAKE KINNAIRD, NAVEEN MODI, JOSEPH PALYS,
`DANIEL ZEILBERGER.
`
`
`

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`Case: 22-1523 Document: 77 Page: 2 Filed: 10/20/2023
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`VIRNETX INC. v. APPLE INC.
`
` JOSHUA JOHN FOUGERE, Sidley Austin LLP, Washing-
`ton, DC, argued for appellee. Also represented by THOMAS
`ANTHONY BROUGHAN, III, JEFFREY PAUL KUSHAN; SCOTT
`BORDER, Winston & Strawn LLP, Washington, DC.
`
` SARAH E. CRAVEN, Office of the Solicitor, United States
`Patent and Trademark Office, Alexandria, VA, argued for
`intervenor. Also represented by THOMAS W. KRAUSE,
`MONICA BARNES LATEEF, AMY J. NELSON, FARHEENA
`YASMEEN RASHEED.
` ______________________
`
`Before LOURIE, BRYSON, and CHEN, Circuit Judges.
`BRYSON, Circuit Judge.
`
`In this appeal from an inter partes reexamination
`proceeding before the Patent Trial and Appeal Board, the
`appellant VirnetX Inc. challenges the Board’s decision
`holding that several claims of VirnetX’s U.S. Patent No.
`6,502,135 (“the ’135 patent”) are invalid. We affirm.
`I
`The ’135 patent is directed to a system and method for
`
`communicating over the Internet and creating a virtual
`private network following a domain-name server look-up
`function.1 Claim 18 of the ’135 patent, which is the
`principal focus of VirnetX’s appeal, provides as follows:
`18. A method of transparently creating a virtual
`private network (VPN) between a client computer
`and a target computer, comprising the steps of
`(1) generating from the client computer a Domain
`Name Service (DNS) request that requests an IP
`
`1 A domain name server uses a look-up table to cor-
`relate human-readable domain names to IP addresses and
`returns the IP address to the user.
`
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`Case: 22-1523 Document: 77 Page: 3 Filed: 10/20/2023
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`VIRNETX INC. v. APPLE INC.
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`3
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`address corresponding to a domain name associ-
`ated with the target computer;
`(2) determining whether the DNS request trans-
`mitted in step (1) is requesting access to a secure
`web site; 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 target com-
`puter, wherein:
`steps (2) and (3) are performed at a DNS server sep-
`arate from the client computer, and step (3) com-
`prises the step of, prior to automatically initiating
`the VPN between the client computer and the tar-
`get computer, determining whether the client com-
`puter is authorized to resolve addresses of non
`secure target computers and, if not so authorized,
`returning an error from the DNS request.
`At the conclusion of the reexamination, the examiner
`
`found claim 18, along with several other claims of the ’135
`patent, to be invalid for anticipation and obviousness over
`several references. The Board reversed some of the exam-
`iner’s rejections but affirmed the rejections of claims 10–14
`and 17–18 on various grounds.
`First, the Board upheld the examiner’s rejection of
`claim 18 for obviousness over a combination of three refer-
`ences—Beser, Kent, and Blum.2 Second, the Board upheld
`the examiner’s rejection of claim 18 for anticipation based
`
`
`2 The Beser reference is U.S. Patent No. 6,496,867;
`the Kent reference is a November 1998 paper entitled “Se-
`curity Architecture for the Internet Protocol”; and the
`Blum reference is U.S. Patent No. 6,182,141.
`
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`VIRNETX INC. v. APPLE INC.
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`on a reference the Board referred to as BinGO.3 Third, the
`Board upheld the examiner’s rejection of claims 10 and 12
`as anticipated by BinGO. Fourth, the Board upheld the
`examiner’s rejection of claim 11 as obvious over a combina-
`tion of BinGO and a reference the Board referred to as
`Reed.4 The Board also affirmed the examiner’s rejection of
`claims 13, 14, and 17, but VirnetX does not challenge the
`Board’s rulings on those claims.
`We affirm the Board’s decision on appeal with respect
`to claims 10, 12, and 18 based on BinGO and, with respect
`to claim 11, based on the combination of BinGO and Reed.
`In view of our decisions regarding BinGO and the combina-
`tion of BinGO and Reed, we do not find it necessary to ad-
`dress the Board’s reliance on the combination of Beser,
`Kent, and Blum.5
`
`II
`A
`At the outset of its discussion of BinGO, VirnetX com-
`
`plains that the Board “recrafted” claim 18, “ignored the
`claim language,” and failed to address the limitations set
`forth in the claim. In particular, VirnetX argues that the
`Board misconstrued the “wherein” clause of claim 18, omit-
`ting the “prior to initiating the VPN” limitation and
`
`
`3 The BinGO reference consists of the BinGO! User’s
`Guide and the BinGO! Extended Feature Reference.
`4 The Reed reference is a paper by Michael G. Reed,
`Paul F. Syverson, and David M. Goldschlag entitled Prox-
`ies for Anonymous Routing, presented at the 12th Annual
`Computer Security Applications Conference in December
`1996.
`5 We also find it unnecessary to address the Board’s
`reliance on collateral estoppel with respect to issues con-
`cerning the combination of Beser and Kent. See J.A. 27–
`32.
`
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`VIRNETX INC. v. APPLE INC.
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`5
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`mischaracterizing the “determining” limitation. As such,
`VirnetX argues, the Board analyzed only its own version of
`claim 18, not the actual language of the claim. VirnetX Br.
`30.
` We disagree with VirnetX’s characterization of the
`Board’s treatment of claim 18. To be sure, claim 18 is writ-
`ten in a manner that makes it hard to understand, and the
`Board confessed that it had difficulty in doing so, especially
`in its effort to map claim 18 on any portion of the ’135 writ-
`ten description.6
`
`VirnetX’s quarrel with the Board’s treatment of claim
`18 relates to the Board’s statement that it needed to decide
`“whether, as a general matter, the Beser, Kent, and Blum
`references would have rendered obvious determining
`whether a client has permission to access a web site and if
`not, returning an error message.” J.A. 31. That general
`characterization of the thrust of claim 18 does not indicate
`that the Board misunderstood the limitations of the claim,
`and particularly the “wherein” clause on which VirnetX fo-
`cuses. In its discussion of obviousness, the Board accu-
`rately
`characterized
`that
`clause as
`requiring a
`determination of “whether a client is authorized to access
`a non secure target computer and returning an error if the
`
`
`6 We agree with the Board that claim 18, as drafted,
`is not easy to understand. Moreover, the Board was correct
`in stating that the written description of the ’135 patent
`appears to contain nothing that describes the invention re-
`cited in claim 18. VirnetX seems to concede as much. As
`support for the claim, VirnetX points not to the written de-
`scription, but to a canceled claim that was part of the initial
`application that ultimately matured into the ’135 patent.
`
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`VIRNETX INC. v. APPLE INC.
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`client is not authorized to access a non-secure target.” J.A.
`32.7
`Later in its decision, when the Board discussed
`whether BinGO anticipates claim 18, the Board again ac-
`curately characterized the requirements of claim 18. In
`that portion of its decision, the Board walked through the
`limitations of claim 18, pointing out how BinGO satisfied
`each of them. The Board explained that if a user enters a
`domain name server request for a website and the destina-
`tion is unknown to the BinGO! Router, the BinGO! Router
`will forward the request to a domain name server for do-
`main name resolution, satisfying steps (1) and (2) of claim
`18. J.A. 44–45. If the request from the client computer is
`for a secure target computer, the Board added, the BinGO!
`Router sets up a virtual private network consistent with
`step (3) of the claimed method. J.A. 45.
`The Board then examined the last limitation of claim
`18, which comprises the step of “determining whether the
`client computer is authorized to resolve addresses of non
`secure target computers and, if not so authorized,
`returning an error from the DNS request.” As to that
`limitation, the Board found that BinGO “discloses
`authentication of the initiating partner, which would
`include situations where the requested web-site is non-
`secure” and that a person of ordinary skill in the art would
`“have immediately understood that such an authentication
`failure would result in an error message being returned.”
`
`7 VirtnetX’s contention that the Board ignored the
`“prior to automatically initiating the VPN” component of
`the “wherein” limitation overlooks the examiner’s finding,
`upheld by the Board, that the BinGO! Router “discloses re-
`quiring authentication before establishing connections to a
`remote server, by disclosing checking incoming data to de-
`cide whether the connection should be allowed.” J.A. 37–
`38.
`
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`VIRNETX INC. v. APPLE INC.
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`7
`
`Id. Throughout that analysis, contrary to VirnetX’s
`contention, the Board neither recrafted claim 18 nor
`misconstrued its limitations.
`B
`VirnetX raises two principal contentions regarding the
`Board’s reliance on BinGO to anticipate claim 18. First,
`VirnetX notes that the Board’s anticipation analysis was
`based not only on the instruction manual known as the
`BinGO! User Guide, but also on the supplemental
`instruction manual known as the BinGO! Extended
`Feature Reference. VirnetX contends that the Board’s
`reliance
`on
`two
`separate
`references disqualifies
`anticipation as an
`invalidating
`theory, because
`anticipation requires that all the
`limitations of a
`challenged claim be found in a single reference. Second,
`VirnetX argues that the Board committed error when it
`found that a person of ordinary skill in the art would have
`understood that an error message would be returned if the
`client computer is authorized to resolve addresses of non-
`secure
`target computers.
` VirnetX contends
`that
`anticipation cannot rest on a finding that a person of
`ordinary skill in the art would have envisaged a limitation
`that is, in fact, missing from the purportedly anticipating
`reference. Neither argument is persuasive.
`1
`As for the argument that the BinGO! User Guide and
`
`the BinGO! Extended Feature Reference are separate
`references and that they cannot be combined for purposes
`of anticipation, the Board found that the User Guide
`incorporates the Extended Feature Reference and thus the
`two references must be treated as one for anticipation
`purposes. That finding is consistent with the law of
`anticipation. See Advanced Display Sys., Inc. v. Kent State
`Univ., 212 F.3d 1272, 1282 (Fed. Cir. 2000) (material in a
`second document is considered incorporated by reference in
`a host document if the context “makes clear that the
`
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`Case: 22-1523 Document: 77 Page: 8 Filed: 10/20/2023
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`VIRNETX INC. v. APPLE INC.
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`material is effectively part of the host document as if it
`were explicitly contained therein”); see also Callaway Golf
`Co. v. Acushnet Co., 576 F.3d 1331, 1346 (Fed. Cir. 2019)
`(incorporation by reference requires that the host
`document “contain language clearly identifying the subject
`matter which is incorporated and where it is to be found”)
`(cleaned up). Whether and to what extent material has
`been incorporated by reference is a question of law that we
`review de novo. Advanced Display, 212 F.3d at 1283;
`Callaway Golf, 576 F.3d at 1346.
`The BinGO! User Guide repeatedly cites to the BinGO!
`Extended Feature Reference, instructing the reader to
`consult the Extended Feature Reference for information
`about how to configure the virtual private network of the
`BinGO! Router. The evidence shows that the two
`documents were “collectively distributed as a single
`reference document,” and that the User Guide directs users
`to consult specific parts of the Extended Feature Reference
`to implement the VPN features of the BinGO! Router. See
`J.A. 6298 (citing portions of the User Guide). The two
`documents thus serve in effect as two volumes of a single
`instruction manual for using the BinGO system. As such,
`the Board was correct in holding that the BinGO! User
`Guide
`incorporates
`the BinGO! Extended Feature
`Reference and that the two references can be considered as
`one for purposes of anticipation.
`2
`We also reject VirnetX’s argument that the Board
`improperly found anticipation given its acknowledgement
`that “BinGO does not expressly disclose returning an error
`message” as required by claim 18. J.A. 45. This court has
`made clear that a reference can anticipate, even when it
`does not expressly recite a claimed limitation, if a person of
`ordinary skill in the art “would reasonably understand or
`infer from the prior art reference’s teaching that every
`claim [limitation] was disclosed in that single reference.”
`
`

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`VIRNETX INC. v. APPLE INC.
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`9
`
`Genentech, Inc. v. Hospira, Inc., 946 F.3d 1333, 1340–41
`(Fed. Cir. 2020) (quoting CRFD Research, Inc. v. Matal, 876
`F.3d 1330, 1338 (Fed. Cir. 2017)). On the other hand, a
`reference that is missing a limitation does not anticipate
`just because “a skilled artisan would ‘at once envisage’ the
`missing limitation.” Id. at 1340 (quoting Nidec Motor Corp.
`v. Zhongshan Board Ocean Motor Co., 851 F.3d 1270,
`1274–75 (Fed. Cir. 2017). The core inquiry is whether a
`person of ordinary skill in the art would understand the
`reference to disclose the limitation in question, rather than
`merely “envisage” a limitation that is in fact missing from
`the reference.
`In this case, the Board concluded that one of ordinary
`skill in the art “would have immediately understood” that
`an authentication failure in the BinGO system “would
`result in an error message being returned.” J.A. 45 (citing
`Apple’s Comments Pursuant to 37 C.F.R. § 1.947, J.A.
`6299). That is, the limitation in question—returning an
`error message upon determining that the client computer
`is not permitted to resolve addresses of non secure target
`computers—would be understood to be disclosed by the
`BinGO reference, even though not expressly stated as such
`in the reference itself. That finding is supported by
`substantial evidence and is sufficient to satisfy the
`requirements of anticipation under Genentech.
`3
`Apart from those two principal challenges to the
`
`Board’s use of BinGO as an anticipating reference, VirnetX
`asserts in passing that BinGO “operates differently than
`claim 18.” VirnetX Br. 32. The evidence on which VirnetX
`relies in making that argument consists of statements from
`its expert’s declaration to the effect that BinGO does not
`disclose “determining if the user’s PC is authorized to
`resolve addresses not located” on the network and does not
`disclose “performing such a determination with respect to
`‘non secure target computers.’” Id. (citing J.A. 4122–23).
`
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`VIRNETX INC. v. APPLE INC.
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`Apple offered contrary evidence, which the examiner
`
`credited, and the Board upheld the examiner’s findings on
`that issue. J.A. 44–45. In particular, Apple offered
`evidence that in one configuration BinGO requires
`authentication before the DNS request is resolved, without
`regard to whether the request specifies a secure or non-
`secure destination; Apple’s evidence also showed that
`BinGO discloses routers that establish and maintain
`connections to multiple networks based on the destination
`specified in a DNS request. See J.A. 351–52, 6296–97;
`Right of Appeal Notice pp. 25–26 (Nov. 6, 2019). That is,
`because BinGO discloses authentication based on target
`computer security, a person of ordinary skill in the art
`would understand that BinGO discloses determining
`whether a user’s computer is authorized to resolve
`addresses not located on the network, including those of
`non secure target computers. We conclude that substantial
`evidence supports the Board’s determination on that issue.
`
`For those reasons, we sustain the Board’s ruling that
`BinGO anticipates claim 18 of the ’135 patent. Because we
`have upheld the use of the BinGO! User Guide and the
`BinGO! Extended Feature Reference as a single reference,
`and because VirnetX has not challenged the rejections of
`claims 10 and 12 on other grounds in this appeal, we
`uphold those rejections as well.
`III
`VirnetX makes a brief reference to claim 11, arguing
`
`that the obviousness rejection of claim 11 based on BinGO
`and Reed “fails for the same reason” as the rejections of
`claims 10, 12, and 18 based on BinGO. VirnetX Br. 36.
`With respect to claim 11, VirnetX makes the same
`argument that the two BinGO references cannot be
`considered as one. Because that argument has been
`rejected for anticipation purposes, it fails a fortiori in the
`obviousness context.
`
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`VIRNETX INC. v. APPLE INC.
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`11
`
`IV
`A
`VirnetX’s final point on appeal relates to the way the
`
`Patent and Trademark Office (“PTO”) handled VirnetX’s
`request for rehearing of the Board’s decision. In its six-
`page request for rehearing, VirnetX sought reconsideration
`of various aspects of the Board’s ruling, including a single
`paragraph devoted to the Board’s reliance on BinGO as an
`anticipating reference for claim 18.
`
`In the concluding paragraph of the request for
`rehearing, VirnetX stated that “reconsideration of all of
`VirnetX’s prior arguments, which VirnetX continues to
`maintain, is also appropriate here given imminent
`guidance from the Supreme Court regarding the proper
`remedy for decisions rendered by Board panels whose
`appointments did not comport with the requirements of the
`Appointments Clause.” J.A. 7055. Citing this court’s
`decision in Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d
`1320 (Fed. Cir. 2019), VirnetX noted that the court had
`held that the Board’s structure “did not comply with the
`constitutional requirements because [Board judges] were
`principal officers of the United States not appointed in
`conformity with the Appointments Clause’s provisions.”
`J.A. 7055. VirnetX then pointed out that the Supreme
`Court “may agree that the remedy [discussed by the
`Federal Circuit in its Arthrex decision] did not cure the
`Appointments Clause violation and/or may order a
`different remedy.” Id. at 7056. In its conclusion, VirnetX
`stated that “whatever remedy is provided by the Supreme
`Court should be provided in the present examination.” Id.
`A week after VirnetX filed its request for rehearing, the
`
`Supreme Court issued its decision in Arthrex, in which it
`agreed with the Federal Circuit that the unreviewable
`authority wielded by Board judges in inter partes review
`proceedings
`is
`incompatible with the Appointments
`Clause, but held that an appropriate remedy was to render
`
`

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`VIRNETX INC. v. APPLE INC.
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`inoperative the statutory restrictions that prevented the
`Director of the PTO from reviewing final decisions issued
`by Board judges during such proceedings. United States v.
`Arthrex, Inc., 141 S. Ct. 1970 (2021).
`Considering VirnetX’s express reference to the
`challenge to the constitutionality of the Board’s structure
`and VirnetX’s request that it be accorded whatever remedy
`the Supreme Court provided in its Arthrex decision, the
`Board treated VirnetX’s request for rehearing as a request
`for Director review. The Commissioner of Patents, Andrew
`Hirshfeld, acting on behalf of the Director, then reviewed
`the request and on January 10, 2022, denied it. J.A. 55–
`57.
`
`VirnetX now contends that it was improper for the
`Board to treat the request for rehearing as a request for
`Director review, and that the Board should itself have
`ruled on the request for rehearing. As a result, VirnetX
`argues, this court should remand the case to the Board for
`a further review of the request for rehearing.
`
`Shortly after the Supreme Court’s decision in Arthrex,
`the PTO issued interim guidance for Director review of
`Board decisions in inter partes review or post-grant review
`cases. The guidance explained that in seeking rehearing,
`a party must choose between asking for rehearing from the
`Board panel or from the Director and would not be
`permitted to request both. See Arthrex Q&As, A3, found at
`https://uspto.gov/patents/patent-trial-and-appeal-board/
`procedures/arthrex-qas (“[A] party may request either
`Director review or rehearing by the original PTAB panel,
`but may not request both.”). Following the issuance of that
`guidance, VirnetX did not specify whether it was seeking
`Director review, Board review, or both.
`B
`VirnetX raises several arguments regarding the
`
`Board’s handling of the request for rehearing. First,
`
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`13
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`VirnetX argues that the Board’s failure to render a decision
`itself on the request for rehearing violated 37 C.F.R.
`§ 41.79(d), which provides that the Board “shall render a
`decision on the request for rehearing.” Second, VirnetX
`points to the requirement of the Administrative Procedure
`Act (“APA”) that an agency “fully and particularly set out
`the bases upon which it reached [its] decision,” Power
`Integrations, Inc. v. Lee, 797 F.3d 1318, 1323 (Fed. Cir.
`2015), and argues that Commissioner Hirshfeld’s denial
`order did not adequately explain the basis for his denial of
`the request for rehearing. VirnetX Br. 38. Third, VirnetX
`contends that
`it
`is unclear whether Commissioner
`Hirshfeld reviewed the request for rehearing on the merits
`rather than simply concluding that Director review is
`unavailable in inter partes reexamination proceedings.
`VirnetX Br. 41–42.8
`
`As Apple points out, the subtext of VirnetX’s complaint
`seems to be that VirnetX should have been permitted to
`seek both rehearing by the Board and Director review,
`rather than having to elect one form of review or the other.
`In the interim guidance provided by the PTO following the
`Supreme Court’s decision in Arthrex, however, the PTO
`made clear that a party could choose which form of review
`to request, but would not be entitled to have a petition for
`rehearing reviewed by both the Board and the Director.
`While it is true that the PTO issued its interim guidance
`
`
`8 VirnetX’s fourth argument is that Commissioner
`Hirshfeld was not properly appointed as a principal officer
`of the United States and thus was not qualified to act on
`behalf of the Director in conducting Director review in this
`case. Br. 43–44. VirnetX acknowledges that its argument
`on that issue is foreclosed by this court’s decision in Ar-
`threx, Inc. v. Smith & Nephew, Inc., 35 F.4th 1328 (Fed.
`Cir. 2022), and is being raised simply to preserve the issue
`for en banc or Supreme Court review.
`
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`VIRNETX INC. v. APPLE INC.
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`after VirnetX filed its request for rehearing, VirnetX could
`have made clear, following the issuance of that interim
`guidance, that it wished to have the Board rule on its
`request for rehearing rather than seeking Director review,
`but it did not.
`
`Contrary to the implications of VirnetX’s position, we
`do not read section 41.79(d) of the PTO’s regulations to
`require the PTO to grant the right to two successive
`reviews of a request for rehearing, one by the Board and
`the other by the Director. VirnetX cites no authority
`indicating that such a two-stage review process is required.
`Nor is the PTO’s position that a party seeking rehearing
`must choose one or the other of those paths at odds with
`the text of section 41.79(d), because the PTO could
`reasonably conclude that a party that elects Director
`review has waived its right to rehearing by the Board.
`
`As for VirnetX’s second argument, neither the PTO
`regulations (including the PTO’s interim guidance) nor the
`APA required Commissioner Hirshfeld or the Board to
`provide an explanation for his decision to deny VirnetX’s
`request for rehearing. The regulation and the interim
`guidance do not require such an explanation,9 and the
`pertinent portion of the APA, 5 U.S.C. § 555(e), likewise
`does not require agencies to explain rehearing denials.
`Rather, the statute expressly states that the requirement
`of an explanation for agency action does not apply to an
`agency decision “affirming a prior denial.” See ICC v. Bhd.
`
`9 The regulation provides that the agency’s decision
`on the request for rehearing “is deemed to incorporate the
`earlier opinion reflecting its decision for appeal, except for
`those portions specifically withdrawn . . . .” 37 C.F.R.
`§ 41.79(d). That provision makes it clear that if the agency
`does not alter the initial decision on rehearing, the expla-
`nation given in the initial decision will serve as the
`agency’s final word on the matter.
`
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`15
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`of Locomotive Eng’rs, 482 U.S. 270, 283 (1987) (“The vast
`majority of denials of reconsideration . . . are made without
`statement of reasons, since 5 U.S.C. § 555(e) exempts from
`the normal APA requirement of ‘a brief statement of the
`grounds for denial’ agency action that consists of ‘affirming
`a prior denial.’”).
`
`There is also no force to VirnetX’s third argument—
`that Commissioner Hirshfeld’s decision following Director
`review may not have been based on the merits. If VirnetX
`can be viewed as having elected Director review, it must be
`regarded as having accepted the possibility that the
`Commissioner might decide the request for rehearing on
`procedural grounds rather than on the merits.
`
`Even assuming the PTO erred in treating VirnetX’s
`request for rehearing as a request for Director review, we
`conclude that the error was harmless. The bulk of
`VirnetX’s request for review is addressed to issues not
`germane to VirnetX’s appeal in this case. The only portion
`of the request for review that is pertinent here is a single
`paragraph dealing with claim 18. J.A. 7054–55. In that
`paragraph, VirnetX argued that the Board erred in holding
`that the error message limitation could be found in BinGO
`because a person of ordinary skill in the art would have
`immediately understood from the BinGO reference that an
`authentication failure would result in an error message
`being returned. J.A. 7055. VirnetX does not challenge the
`Board’s factual finding on that issue, and we have held
`above that the Board’s legal conclusion flowing from that
`finding was consistent with our decision in Genentech. It
`is therefore highly unlikely that the Board’s decision on the
`request for review would have resulted in relief based on
`that claim of error.
`
`The other ground on which VirnetX challenged the
`Board’s ruling on claim 18 was VirnetX’s assertion, without
`elaboration, that the Board “misapprehended” VirnetX’s
`argument that BinGO does not disclose limitation (3) of
`
`

`

`Case: 22-1523 Document: 77 Page: 16 Filed: 10/20/2023
`
`16
`
`VIRNETX INC. v. APPLE INC.
`
`claim 18 and the following “wherein” clause of the claim.
`In our discussion of the Board’s interpretation of claim 18
`above, we analyzed and rejected VirnetX’s argument that
`the Board misunderstood claim 18. For the same reasons,
`there is no substantial likelihood that the arguments made
`in VirnetX’s request for rehearing would have led the
`Board to alter its ruling as to claim 18. We therefore
`conclude that the PTO’s decision to direct VirnetX’s request
`for rehearing to Commissioner Hirshfeld rather than the
`Board was, at most, harmless error, and that a remand for
`Board consideration of the request is not required.
`AFFIRMED
`
`