NOTE: This order is nonprecedential.

United States Court of Appeals

for the Federal Circuit
______________________

In re: APPLE INC.,

Petitioner
______________________

2018-123
______________________

On Petition for Writ of Mandamus to the United

States District Court for the Eastern District of Texas in
Nos. 6:11-cv-00563-RWS and 6:12-cv-00855-RWS, Judge
Robert Schroeder III.
______________________

ON PETITION
______________________

Before PROST, Chief Judge, WALLACH and TARANTO,

Circuit Judges.
PROST, Chief Judge.
ORDER
In this patent infringement case, the United States
District Court for the Eastern District of Texas denied
Apple Inc.’s motion to stay an upcoming limited retrial
pending this court’s resolution of appeals from the United
States Patent and Trademark Office concerning the same
patents. VirnetX Inc. v. Apple Inc., No. 6:12-cv-00855-
2 IN RE: APPLE INC.

RWS (E.D. Tex. Jan. 12, 2018) (“the 855 action”) (referred
to herein as the “Stay Order”). * Apple now seeks a writ of
mandamus directing the district court to grant its stay
motion. We deny.
BACKGROUND
In 2010, VirnetX filed its initial complaint in the
Eastern District of Texas against Apple and other defend-
ants, alleging, inter alia, that the VPN On Demand and
FaceTime features of Apple’s products infringed VirnetX’s
patents. VirnetX Inc. v. Apple Inc., No. 6:10-cv-417 (E.D.
Tex. Aug. 11, 2010) (“the 417 action”). A jury found that
the asserted claims were infringed and not invalid and
awarded $368 million in damages. On appeal, this court
affirmed the portions of the judgment concerning invalidi-
ty and infringement for the VPN On Demand feature, but
reversed the finding of infringement for the FaceTime
feature, vacated the damages award, and remanded for
further proceedings. VirnetX, Inc. v. Cisco Sys., Inc., 767
F.3d 1308, 1313–14 (Fed. Cir. 2014) (“Cisco”).

* Specifically, this case involves U.S. Patent Nos.

6,502,135 (“the ’135 patent”), 7,418,504 (“the ’504 pa-
tent”), 7,490,151 (“the ’151 patent”) and 7,921,211 (“the
’211 patent”). Those patents are the subject of several
appeals currently before this court. Appeal Nos. 2017-
1591, -1592, -1593 are appeals from inter partes reexami-
nations of the ’504 and ’211 patents; Appeal Nos. 2017-
1368, -1383 are appeals from inter partes reviews of the
’135 and ’151 patents; and Appeal Nos. 2017-2593, -2594
are appeals from inter partes reviews of the ’504 and ’211
patents. Appeal Nos. 2017-2593, -2594 have been stayed
pending the resolution of Appeal Nos. 2017-1591, -1592,
-1593. Appeal Nos. 2017-1591, -1592, -1593 have been
fully briefed and await oral argument. Appeal Nos. 2017-
1368, -1383 are still being briefed by the parties.
IN RE: APPLE INC. 3

Meanwhile, VirnetX’s charges prompted Apple and

others to request review of the asserted claims by the
PTO. Additionally, shortly after the verdict in the 417
action, VirnetX filed the underlying complaint (the 855
action), which sought post-verdict damages for ongoing
infringement of the VPN On Demand and FaceTime
features and alleged that the same claims were infringed
by another feature of Apple’s products. Apple moved the
district court to stay the 855 action pending the PTO
proceedings, but the district court denied the motion
before the Cisco decision issued.
After our mandate issued in the 417 action, the dis-
trict court consolidated it with this case over Apple’s
objections. In February 2016, a jury rendered its verdict
in the consolidated cases and again returned a verdict of
infringement, awarding VirnetX $625 million. But in
July 2016, the district court granted Apple’s motion for a
new trial, finding that consolidation and repeated discus-
sion of the prior verdict before the jury resulted in an
unfair trial. Accordingly, the district court decided to
bifurcate the actions and ordered another limited trial in
the 417 action, followed by a second limited trial in the
855 action on the issues of infringement and damages.
Also in July 2016, Apple renewed its request to stay
the trials in the 417 and 855 actions pending completion
of the PTO proceedings, noting that the PTO had issued
final rejections of all of the asserted claims. In September
2016, just before the start of the retrial in the 417 action,
the court again denied Apple’s motion for a stay. After
the trial in the 417 action, the jury returned a verdict for
VirnetX, awarding $302 million in damages. In February
2017, Apple again moved to stay the 855 trial, which is
scheduled for April 2018, pending completion of the
appeals of the PTO decisions. In September 2017, the
court denied Apple’s motion and subsequently issued an
opinion in January 2018 that provided the reasons for
denying the stay.
4 IN RE: APPLE INC.

DISCUSSION
The decision to stay litigation is one committed to the
sound discretion of the trial court. See Gould v. Control
Laser Corp., 705 F.2d 1340, 1341 (Fed. Cir. 1983); see also
Landis v. N. Am. Co., 299 U.S. 248, 254–55 (1936). “Dis-
trict courts typically analyze stays under a three-factor
test: (i) whether a stay would unduly prejudice or present
a clear tactical disadvantage to the non-moving party;
(ii) whether a stay will simplify the issues in question and
trial of the case; and (iii) whether discovery is complete
and whether a trial date has been set.” Murata Mach.
USA v. Daifuku Co., 830 F.3d 1357, 1361 (Fed. Cir. 2016)
(internal quotation marks and citations omitted).
The district court considered these factors and con-
cluded that there was not good cause for a stay. “Im-
portantly, on mandamus review our role is not to second-
guess the trial court’s decision[.]” In re Med. Components,
Inc., 535 F. App’x 916, 918 (Fed. Cir. 2013). Instead, we
look only to see whether the decision amounted to a “clear
abuse of discretion.” Bankers Life & Cas. Co. v. Holland,
346 U.S. 379, 383 (1953). This means that we will not
disturb a district court’s denial of a stay motion “if a
rational and substantial legal argument can be made in
support of the [court’s decision] . . . even though on nor-
mal appeal, a court might find reversible error.” In re
Cordis Corp., 769 F.2d 733, 737 (Fed. Cir. 1985).
Although this case is made closer by the advanced
stage of the PTO proceedings, we cannot say that Apple
has met this standard. To begin with, Apple could have
asked this court to conduct mandamus review 15 months
earlier, when the district court in September 2016 denied
a stay despite the PTO having issued final, appealable
decisions finding that all of the asserted claims were
unpatentable. Apple’s extensive delay in seeking man-
damus review clearly weighs against the need for issu-
IN RE: APPLE INC. 5

ance of such extraordinary relief. See In re Telular Corp.,

319 F. App’x 909, 911 (Fed. Cir. 2009).
Second, even Apple must concede that “the 855 action
has advanced significantly.” Pet. at 27. The district court
noted that “Apple’s and VirnetX’s dispute in this Court
has already spanned almost seven years,” that
“[d]iscovery was completed four years ago,” that “[t]he
only aspect of the case now remaining before the Court is
a retrial of the 855 case” on the issues of infringement and
damages, and that “this case has gone through multiple
rounds of dispositive and post-trial motion practice,
numerous pretrial conferences and three trials.” Stay
Order at 6–7. Given these circumstances, we cannot say
that the district court abused its discretion in weighing
this factor against a stay, let alone, clearly so.
Apple contends that VirnetX will not be unduly preju-
diced and that there was no tactical advantage on the
part of Apple to request a stay. The district court, howev-
er, considered and rejected these arguments, noting that a
stay would, at a minimum, further delay the enforcement
of VirnetX’s patent rights and receipt of compensation
caused by Apple’s alleged infringement. Id. at 5–6. The
court further noted that it was concerned that a stay
would present a “distinct tactical advantage to Apple”
given “Apple asked the Court to order the two new trials
while it engaged in significant practice at the PTO.” Id.
at 6. Apple argues that it cannot be blamed for request-
ing a new trial that was necessitated by the trial court’s
error in consolidating the cases in the first place. But
even taking this point in Apple’s favor, the district court
weighed this factor as a whole only “slightly” against a
stay. Id.
Apple argues that because a stay here would obviate
the need for a retrial in the 855 action if the PTO’s rejec-
tions are affirmed, the simplification factor weighs “heavi-
ly in favor of a stay.” Pet. at 24. But in Smartflash LLC
6 IN RE: APPLE INC.

v. Apple Inc., 621 F. App’x 995 (Fed. Cir. 2015), this court
was unwilling to go so far. There, the PTO instituted
covered business method (“CBM”) review in the middle of
post-trial motions practice and before a new damages trial
had been ordered, which appellant noted would be unnec-
essary if the CBM review led to the cancellation of the
claims. Id. at 1000. This court found no abuse of discre-
tion in denying a stay, explaining in part that “[t]he
district court and a jury have already addressed in-
fringement and invalidity issues, which are the only
questions common to the two proceedings which could be
‘simplified’ by agency review” and that “[t]he new trial is
limited solely to a consideration of the appropriate meas-
ure of damages,” an issue “with which the PTO is not
concerned.” Id. at 1001.
Apple says that the retrial will be costly and time con-
suming. But the district court points out that the burden
of a retrial will be “relatively minimal when compared to
the resources thus far expended in this litigation.” Stay
Order at 7. Apple contends that the district court failed
to conduct a “forward-looking” analysis. Reply at 8. We
disagree. Smartflash noted that expended costs can “be
informative, so long as they are viewed in the context of
how much work remains.” 621 F. App’x at 1004. And
here, the district court explained that “because this is a
retrial of a case that the parties and the Court have
already tried to a jury twice, there are few issues for the
parties to brief or for the Court to resolve going forward.”
Stay Order at 8. Apple has not shown that the district
court’s analysis was a clear abuse of discretion.
Moreover, there are potentially good reasons here not
to delay proceeding with the retrial. The court, the par-
ties, and the witnesses have had a settled expectation for
some time that the retrial would take place in April 2018
and have been preparing accordingly. In addition, given
the streamlined nature of the retrial and the current
status of the appeals in question, it is likely that the
IN RE: APPLE INC. 7

district court will complete its limited retrial before any

decision from this court on the PTO rulings. Further-
more, a prompt retrial will allow the district court to get
the most out of its familiarity with the case, efficiencies
that may not be realized if the court were to grant the
potentially lengthy delay that Apple requests here.
In balancing the factors, the district court found that
“[e]ven if the Court considers that the PTO appeals could
ultimately moot these proceedings,” that such considera-
tion would not, in its view, outweigh “the late stage of the
case and the undue prejudice to VirnetX if a stay were
granted.” Stay Order at 9. While Apple contends that the
district court should have accorded more weight to the
burden of retrial and less weight to costs already expend-
ed in the case, “[t]he legal standards governing review of
stay rulings leave much to district court’s discretion,
allowing for a range of choice in weighing the factors that
bear on this exercise.” Ultratec, Inc. v. CaptionCall, LLC,
611 F. App’x 720, 723 (Fed. Cir. 2015). Here, the trial
court clearly considered all of the applicable factors, and
we cannot say that its judgment falls so far outside of that
range of choice that mandamus relief is warranted.
Accordingly,
IT IS ORDERED THAT:
The petition is denied.
FOR THE COURT

/s/ Peter R. Marksteiner

Peter R. Marksteiner
Clerk of Court
s32