Apple isn't getting $454M back from VirnetX because it waited too long to ask

Apple won't be able to get back any of the $454 million it paid to VirnetX for infringing patents even after those patents were invalidated, a judge ruled on Tuesday.

In March, VirnetX confirmed that Apple sent a $454 million payment for infringing several of its patents through the FaceTime and VPN on Demand features. The payment capped a legal saga a decade in the making.

Apple was hoping to get some of that payment back, but U.S. District Judge Robert W. Schroeder III ruled on Tuesday that Apple unreasonably delayed its request to do so, according to a decision spotted by Law360.

The Federal Circuit in August 2019 reviewed several inter partes decisions, which ultimately left one and a half VirnetX patents invalidated. Apple then asked the Federal Circuit to allow those patent invalidations to be used in its district court proceedings. The Federal Circuit denied that request.

Apple then took the issue to the Supreme Court, filing a petition to challenge the Federal Circuit's decision and claiming that the Patent Trial and Appeal Board's decision should affect the district court ruling.

Just before the Supreme Court dismissed Apple's petition, the company filed the Rule 60(b) motion for relief from the judgement.

In his decision Tuesday, Judge Schroeder said that Apple waited too long to file a "strikingly" similar motion, adding that because "Apple drafted a substantively identical motion in six days, it did not need five months to reframe that motion as a request for relief under Rule 60(b)."

The judge was also unswayed by Apple's argument that it wanted to give the Supreme Court time to render a decision. He said that VirnetX could not have been prejudiced in this case, since it had already been paid.

"VirnetX's lack of prejudice cuts against a finding of untimeliness, but it does not outweigh Apple's failure to provide a colorable excuse for its delay," Judge Schroeder wrote in his order.

Although the saga concerning the $454 million is over, Apple and VirnetX are still in an ongoing battle over a second patent infringement case that was partially overturned in November and sent back to lower courts.