Apple Inc. v. Mph Technologies Oy ( 2022 )

Case: 21-1355 Document: 43 Page: 1 Filed: 09/08/2022
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
APPLE INC.,
Appellant
v.
MPH TECHNOLOGIES OY,
Appellee
______________________
2021-1355, 2021-1356
______________________
Appeals from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in Nos. IPR2019-
00819, IPR2019-00820.
______________________
Decided: September 8, 2022
______________________
BRIAN ROBERT MATSUI, Morrison & Foerster LLP,
Washington, DC, argued for appellant. Also represented
by SETH W. LLOYD, JOSEPH R. PALMORE; RICHARD HUNG,
San Francisco, CA; BITA RAHEBI, Los Angeles, CA.
BRIAN ERIK HAAN, Lee Sheikh & Haan LLC, Chicago,
IL, argued for appellee. Also represented by ASHLEY E.
LAVALLEY, CHRISTOPHER LEE; JAMES CARMICHAEL,
STEPHEN TERRY SCHREINER, Carmichael IP, PLLC, Tysons
Corner, VA.
Case: 21-1355 Document: 43 Page: 2 Filed: 09/08/2022
2 APPLE INC. v. MPH TECHNOLOGIES OY
______________________
Before LOURIE, HUGHES, and CUNNINGHAM, Circuit
Judges.
CUNNINGHAM, Circuit Judge.
Apple Inc. appeals the final written decisions issued in
two Patent Trial and Appeal Board inter partes reviews
concerning U.S. Patent No. 7,620,810 and U.S. Patent No.
7,937,581 (collectively, the “Challenged Patents”), both
owned by MPH Technologies Oy. Apple Inc. v. MPH Techs.
Oy, IPR2019-00819, 2020 WL 5735595 (P.T.A.B. Sept. 24,
2020) (Decision I); Apple Inc. v. MPH Techs. Oy, IPR2019-
00820, 2020 WL 5735601 (P.T.A.B. Sept. 24, 2020) (Deci-
sion II). Because the Board adopted an erroneous claim
construction of “encrypted” messages in both decisions, we
vacate the Board’s unpatentability determinations based
on that construction and remand for further consideration.
Because we further hold that the Board properly found that
Apple’s petition failed to demonstrate the unpatentability
of dependent claims 6–8 of the ’581 patent, we affirm as to
those claims.
I. BACKGROUND
A. The Challenged Patents
The Challenged Patents are both entitled “Method and
Network for Ensuring Secure Forwarding of Messages.”
They share a specification in all aspects relevant to this ap-
peal. Each is directed to a method of facilitating a secure
connection in a telecommunication network. See, e.g., ’810
Patent Abstract; ’581 Patent Abstract. Each describes the
prior art IP security protocols (“IPSec”) as “provid[ing] the
capability to secure communications between arbitrary
hosts.” ’810 Patent, col. 1 ll. 57–58; ’581 Patent, col. 1 ll.
59–60. The patents explain that “IPSec is intended to work
with static network topology, where hosts are fixed to cer-
tain subnetworks” and can be “problematic” if used with
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APPLE INC. v. MPH TECHNOLOGIES OY 3
mobile hosts. ’810 Patent, col. 4 ll. 10–54; ’581 Patent, col.
4 ll. 13–65.
The ’810 patent has seven claims. Claim 1 requires:
1. A method for ensuring secure forwarding of a
message in a telecommunication network, hav-
ing at least one mobile terminal and another ter-
minal and a security gateway therebetween, the
method comprising:
a) establishing a secure connection be-
tween a first address of the mobile terminal
and an address of the security gateway, the
secure connection defined by at least the
addresses of the mobile terminal and the
security gateway,
b) the mobile terminal changing from the
first address to a second address,
c) while at the second address, the mobile
terminal sending a request message to the
address of the security gateway to request
the security gateway to change the secure
connection to be defined between the sec-
ond address and the address of the security
gateway,
in response to the request message from
the mobile terminal, the security gateway
changing an address definition of the se-
cure connection from the first address to
the second address, the mobile terminal
sending a secure message in the secure con-
nection from the second address of the mo-
bile terminal to the other terminal via the
security gateway,
the secure connection being established by
forming a Security Association (SA) using
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4 APPLE INC. v. MPH TECHNOLOGIES OY
IPSec protocols, and the request message
and/or a reply message being encrypted
and/or authenticated by using the same SA
already established.
’810 Patent, col. 10 l. 48–col. 11 l. 8 (emphasis added).
Claim 7, the ’810 patent’s only other independent claim, is
similar to claim 1 but does not require a “request message
and/or a reply message being encrypted and/or authenti-
cated.” Id. col. 12 ll. 1–22.
The ’581 patent is a continuation of the ’810 patent. It
includes nine claims, several of which are at issue in this
appeal. Claim 1 of the ’581 patent requires:
1. A method for ensuring secure forwarding of a
message in a telecommunication network, hav-
ing at least one mobile terminal and another ter-
minal and a security gateway therebetween, the
method comprising:
a) establishing a secure connection having
a first address of the mobile terminal as a
first end-point and a gateway address of
the security gateway as a second end-point,
b) the mobile terminal changing from the
first address to a second address,
c) while at the second address, the mobile
terminal sending a request message to the
gateway address of the security gateway to
request the security gateway to change the
secure connection to be defined between
the second address and the gateway ad-
dress of the security gateway,
in response to the request message from
the mobile terminal, the security gateway
changing an address definition of the
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APPLE INC. v. MPH TECHNOLOGIES OY 5
secure connection from the first address to
the second address, and
the mobile terminal sending a secure mes-
sage in the secure connection from the sec-
ond address of the mobile terminal to the
other terminal via the security gateway.
’581 Patent, col. 10 l. 50–col. 11 l. 3. Relevant here, claim 4
further requires an “encrypted and/or authenticated” re-
quest or reply message, and dependent claims 5–8 add ad-
ditional limitations to claims 1 and 5:
4. The method of claim 1, wherein the request mes-
sage and/or a reply message is encrypted and/or
authenticated.
5. The method of claim 1 wherein the method fur-
ther comprises the security gateway sending
back a reply message to the mobile terminal at
the second address to confirm the address
change.
6. The method of claim 5, wherein the mobile termi-
nal and the other terminal form an end-to-end
connection whereby the secure connection is an
IPSec transport connection or IPSec tunnel con-
nection.
7. The method of claim 5, wherein a tunneling pro-
tocol is used for the secure connection between
the mobile terminal and the security gateway.
8. The method of claim 5, wherein the other termi-
nal is a mobile terminal.
Id. col. 11 ll. 9–23 (emphasis added).
B. Procedural History
In 2018, MPH sued Apple for infringement of eight pa-
tents in the Northern District of California. MPH Techs.
Oy v. Apple Inc., No. 4:18-cv-05935-PJH (N.D. Cal.); J.A. 3.
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6 APPLE INC. v. MPH TECHNOLOGIES OY
Apple then filed multiple IPR petitions, two of which are at
issue in this appeal. J.A. 154–229, 3258–329.
For IPR 2019-00819, the Board instituted review of the
’810 patent on three grounds, each based on obviousness
under 35 U.S.C. § 103(a). 1 Decision I at *3. Ground 1 chal-
lenged claims 1, 4–5, and 7 based on U.S. Patent No.
6,904,466 to Ishiyama et al. (“Ishiyama”) and U.S. Patent
No. 7,028,337 to Murakawa (“Murakawa”). Id. Ground 2
challenged claims 2 and 3 based on Ishiyama, Murakawa,
and U.S. Patent No. 6,976,177 to Ahonen (“Ahonen”). Id.Ground 3 challenged claim 6 based on Ishiyama, Mura-
kawa, and U.S. Patent No. 6,954,790 to Forslöw (“For-
slöw”). Id.For IPR 2019-00820, the Board instituted IPR as to the
’581 patent on three grounds. Decision II at *3. Ground 1
challenged claims 1–2, 4, 6–7, and 9 based on Ishiyama and
Murakawa. Id. Ground 2 challenged claims 3 and 5 based
on Ishiyama, Murakawa, and Ahonen. Id. Ground 3 chal-
lenged claim 8 based on Ishiyama, Murakawa, and For-
slöw. Id.In IPR 2019-00819, the Board agreed with Apple that
Ishiyama and Murakawa rendered unpatentable claim 7 of
the ’810 patent. Decision I at *22. In IPR 2019-00820, the
Board agreed that Ishiyama and Murakawa rendered un-
patentable claims 1, 2, and 9 of the ’581 patent, and that
Ishiyama, Murakawa, and Ahonen rendered unpatentable
claims 3 and 5 of the ’581 patent. Decision II at *27.
1 Congress amended § 103. See Leahy-Smith Amer-
ica Invents Act, Pub. L. No. 112-29, § 3(c), 125 Stat. 284,
287–88 (2011) (“AIA”). Because the applications that led
to the Challenged Patents were filed before March 16,
2013, the pre-AIA § 103(a) applies. See AIA § 3(n), 125
Stat. at 293.
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APPLE INC. v. MPH TECHNOLOGIES OY 7
Relevant to this appeal, the Board’s interpretation of an
“encrypted” request and/or reply message led it to conclude
that Apple failed to demonstrate that claims 1–6 of the ’810
patent and claim 4 of the ’581 patent would have been ob-
vious. Decision I at *8, 22; Decision II at *18–20. In its
petitions, Apple argued that all terms should receive their
ordinary and customary meaning. J.A. 169, 3273. MPH
proposed a construction of “security gateway,” but the
Board did not base its decision on that claim term. Decision
I at *4–5; Decision II at *4. Thus, the Board determined
that “no express claim construction [was] necessary.” De-
cision I at *5; Decision II at *4. The Board then interpreted
the “plain words” of “request message and/or a reply mes-
sage being encrypted” to require “that the message is en-
crypted—not that a portion of the message is encrypted.”
Decision I at *8; Decision II at *19. Based on its interpre-
tation, the Board concluded that Ishiyama could not meet
this limitation because its request message “includ[ed] the
outer packet, and that packet is unencrypted.” Decision I
at *8–9; Decision II at *18–19.
The Board also concluded that Apple failed to meet its
burden as to claims 6–8 of the ’581 patent because Grounds
1 and 3 in IPR 2019-00820 did not address the intervening
limitations of claim 5, from which claims 6–8 depend. De-
cision II at *20, 27. The Board accepted that the combina-
tion of Ishiyama and Murakawa rendered claim 1 of the
’581 patent obvious. Id. at *6, 11. The Board further ac-
cepted that adding Ahonen to that combination taught the
additional limitation of dependent claim 5, i.e., “the secu-
rity gateway sending back a reply message to the mobile
terminal at the second address to confirm the address
change.” Id. at *26–27. Because Apple did not include Aho-
nen in Ground 1 addressing claims 6 and 7 or Ground 3
addressing claim 8, the Board held that Apple did not carry
its burden as to those claims. Id. at *20, 27.
Apple timely appealed. We have jurisdiction under
28 U.S.C. § 1295(a)(4)(A).
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8 APPLE INC. v. MPH TECHNOLOGIES OY
II. DISCUSSION
Apple presents two arguments on appeal. First, Apple
argues that the Board adopted an erroneous claim con-
struction of “request message and/or a reply message being
encrypted” that excludes messages sent using packets with
unencrypted address information. Appellant’s Br. 15–17,
18–29. Second, Apple argues that the Board should have
considered Apple’s arguments for the unpatentability of
’581 patent claim 5 in evaluating its arguments regarding
claims 6–8. Appellant’s Br. 17–18, 37–46. We address each
argument in turn.
A. Claim Construction
“We review the Board’s claim construction de novo and
any underlying factual findings for substantial evidence.”
Kaken Pharm. Co. v. Iancu, 952 F.3d 1346, 1350 (Fed. Cir.
2020) (citing Teva Pharms. USA, Inc. v. Sandoz, Inc., 574
U.S. 318, 331–33 (2015)). “The words of a claim are gener-
ally given their ordinary and customary meaning as under-
stood by a person of ordinary skill in the art when read in
the context of the specification and prosecution history.”
Thorner v. Sony Comput. Ent. Am. LLC, 669 F.3d 1362,
1365 (Fed. Cir. 2012) (citing Phillips v. AWH Corp., 415
F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc)).
Apple contends the Board erroneously construed “en-
crypted” to exclude packets with unencrypted address in-
formation. Appellant’s Br. 20. According to Apple,
“encrypted” messages must rely on packets with unen-
crypted addressing information, and the Challenged Pa-
tents teach that encrypted messages use such packets.
Appellant’s Br. 25–26. MPH argues that the claims require
the request message to “cause the changing of the address
definition,” and that “Apple admitted below that it is the
outer header of Ishiyama’s packet,” which is unencrypted,
“that alone is responsible for changing the address defini-
tion to the second address.” Appellee’s Br. 32 (emphasis in
original). We agree with Apple that the Board’s
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APPLE INC. v. MPH TECHNOLOGIES OY 9
construction of an “encrypted” request and/or reply mes-
sage is erroneous and contradicts the intrinsic record.
Before addressing the substantive claim construction
dispute, we first address certain preliminary arguments
raised by MPH. MPH argues that the Board did not issue
a claim construction at all, but instead made a factual find-
ing that the Ishiyama reference fails to teach an encrypted
request message. Appellee’s Br. 14, 30–31, 40. MPH also
argues that Apple waived its claim construction arguments
by not presenting them to the Board. Appellee’s Br. 34.
We agree with Apple that the Board performed a claim
construction. The Board stated that “the plain words of the
claim state that the message is encrypted—not that a por-
tion of the message is encrypted. . . . Simply put, claim 1
requires that the request message (not just a portion
thereof) is encrypted . . . .” Decision I at *8 (emphasis
added); see also Decision II at *19 (same regarding claim
4). In doing so, the Board “establish[ed] the scope and
boundaries of the subject matter that is patented.” Net-
word, LLC v. Centraal Corp., 242 F.3d 1347, 1350 (Fed. Cir.
2001); see also HTC Corp. v. Cellular Commc’ns Equip.,
LLC, 877 F.3d 1361, 1367 (Fed. Cir. 2017) (“Despite no ex-
press construction of [claim term] below, Board findings es-
tablishing the scope of the patented subject matter may fall
within the ambit of claim construction.”). This is not an
“application of the claim terms ‘encrypted’ and ‘request
message’ to prior art,” as MPH contends, Appellee’s Br.
45–46, but a construction as to what the claims mean.
We also reject MPH’s argument that Apple waived or
forfeited 2 any claim construction arguments by not
2 While MPH argues Apple “waived” its claim con-
struction arguments, Appellee’s Br. 34, we interpret MPH
to argue Apple forfeited its arguments. See In re Google
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10 APPLE INC. v. MPH TECHNOLOGIES OY
presenting them to the Board. Appellee’s Br. 34. Neither
Apple nor MPH proposed construing “encrypted,” and the
Board did not suggest a construction in its initial determi-
nation. J.A. 10, 66, 346–47, 3452–53. Instead, the Board
appears to have created a dispute as to the meaning of “en-
crypted” during its questioning at oral argument. J.A.
742:18–20 (“[I]f the outer portion [of the packet] is not en-
crypted, then why wouldn’t only a portion of the request
message be encrypted?”); see also id. at 742:21–748:2. We
decline to find forfeiture where neither party disputed the
construction of a term and the Board nevertheless issued a
sua sponte construction in its final written decision that di-
verged from the parties’ understanding of the claim. See,
e.g., Lifestyle Enter., Inc. v. United States, 751 F.3d 1371,
1377 (Fed. Cir. 2014) (“[A] party may raise on appeal any
issue that was . . . actually decided below.”); Hollmer v. Ha-
rari, 681 F.3d 1351, 1356 n.3 (Fed. Cir. 2012) (declining to
find party waived arguments regarding applicability of ear-
lier decision where Board “sua sponte” applied that deci-
sion in its ruling without briefing or comment); see also
Qualcomm Inc. v. Intel Corp., 6 F.4th 1256, 1263 (Fed. Cir.
2021) (“[U]nlike with disputed terms, it is unreasonable to
expect parties to brief or argue agreed-upon matters of
claim construction.”).
“When construing claim terms, we first look to, and pri-
marily rely on, the intrinsic evidence, including the claims
themselves, the specification, and the prosecution history
of the patent, which is usually dispositive.” Sunovion
Pharms., Inc. v. Teva Pharms. USA, Inc., 731 F.3d 1271,
Tech. Holdings LLC, 980 F.3d 858, 862 (Fed. Cir. 2020)
(“[F]orfeiture is the failure to make the timely assertion of
a right”). We recognize that our precedent has “not always
been precise” in distinguishing waiver and forfeiture, and
we do not fault a party that, understandably, has done just
the same. Id. at 862–63.
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APPLE INC. v. MPH TECHNOLOGIES OY 11
1276 (Fed. Cir. 2013). “The specification is always highly
relevant to the claim construction analysis and is, in fact,
the single best guide to the meaning of a disputed term.”
Trs. of Columbia Univ. v. Symantec Corp., 811 F.3d 1359,
1363 (Fed. Cir. 2016) (cleaned up); Phillips, 415 F.3d at
1315 (“[T]he specification . . . is the single best guide to the
meaning of a disputed term.”).
Here, the claims require that a “request message
and/or a reply message” is “encrypted.” ’810 Patent, col. 10
l. 48–col. 11 l. 8; ’581 Patent, col. 11 ll. 9–10. The Board
placed significant emphasis on the patents’ statement that
“signal[ ] 10a . . .can be encrypted and/or authenticated.”
Decision I at *8 (emphasis added); Decision II at *19 (em-
phasis added). But this statement alone does not speak to
whether the patents consider signals (or messages) trans-
mitted using packets with certain unencrypted addressing
information to be “encrypted.” ’810 Patent, col. 9, l. 66–col.
10 l. 5; ’581 Patent, col. 9 l. 63–col. 10 l. 2. The very next
sentence from the specifications states that “encryption . . .
is preferably performed by using IPSec,” suggesting IPSec
protocols inform when a message is or is not encrypted.
’810 Patent, col. 10 ll. 5–8; ’581 Patent, col. 10 ll. 2–5. Con-
sistent with this discussion, claim 1 of the ’810 patent re-
quires that the message is encrypted “by using the same
[Security Association] already established,” where that Se-
curity Association is established “using IPSec protocols.”
’810 Patent, col. 10 l. 48–col. 11 l. 8; see also Hockerson-
Halberstadt, Inc. v. Converse Inc., 183 F.3d 1369, 1374
(Fed. Cir. 1999) (“Proper claim construction, however, de-
mands interpretation of the entire claim in context, not a
single element in isolation.”). Thus, we turn to the specifi-
cations’ discussion of IPSec to determine when messages
are encrypted.
Mirroring the claims’ requirement of “encrypted and/or
authenticated,” the specifications discuss two protocols
used within IPSec to provide security: “Authentication
Header (AH)” and “Encapsulating Security Payload
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12 APPLE INC. v. MPH TECHNOLOGIES OY
(ESP),” both of which “operat[e] by adding a protocol
header.” ’810 Patent, col. 2 ll. 11–17; ’581 Patent, col. 2 ll.
13–19. Both AH and ESP support “transport mode”—
which “provides protection primarily for upper layer proto-
cols and extends to the payload of an IP packet”—and “tun-
nel mode”—which “provides protection to the entire IP
packet.” ’810 Patent, col. 3 ll. 4–19; ’581 Patent, col. 3 ll.
6–22. Tunnel mode is generally used to send messages
“through more than two components,” such that packets
are “tunnelled [sic] through external networks.” ’810 Pa-
tent, col. 3 ll. 16–19, col. 3 ll. 24–27; ’581 Patent, col. 3 ll.
19–22, col. 3 ll. 27–30. The specifications describe that in-
itial ESP fields are added to an “original, or inner, packet,”
and “the entire packet plus security fields” is “treated as
the payload of a new outer IP packet with a new outer IP
header.” ’810 Patent, col. 3 ll. 28–33; ’581 Patent, col. 3 ll.
31–36. The resulting packet is described as “IP | ESP | IP
| payload,” where the outermost “IP” applies to the “new
larger packet” and “may have totally different source and
destination addresses,” while the inner packet—“IP | pay-
load”—is protected by the ESP fields. ’810 Patent, col. 3 ll.
31–42; ’581 Patent, col. 3 ll. 34–45. With this arrangement,
the “inner IP packet” can be tunneled so that “no routers
along the way are able to examine the inner IP packet,”
while “intermediate routers” examine “only the outer IP
header.” ’810 Patent, col. 3 ll. 31–33, col. 3 ll. 55–57; ’581
Patent, col. 3 ll. 34–36, col. 3 ll. 58–60.
Accordingly, the specifications contemplate that “en-
crypted” messages can be sent using outer packets with
certain unencrypted addressing information, contrary to
the Board’s construction. As discussed in both patents, the
outer packet’s “IP” information is not protected by ESP
fields, allowing intermediate routers to examine that infor-
mation. Messages are still secure because the ESP fields
protect the inner packet’s IP information and payload.
Consistent with this analysis, MPH appears to agree
that a message with certain unencrypted addressing
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APPLE INC. v. MPH TECHNOLOGIES OY 13
information can meet the claims. First, MPH did not raise
or dispute the construction of the term “encrypted” to the
Board. Decision I at *4; Decision II at *4. Instead, MPH
argued to the Board that the unencrypted “outer header it-
self” cannot serve as the “request message.” Appellee’s Br.
14–15 (emphasis added); see also id. at 31(arguing the
same before us). The Board agreed with Apple and con-
cluded that “Ishiyama’s entire transmitted packet (i.e., the
encapsulated packet plus the outer packet, which has the
changed source address) is the claimed request message.”
Decision I at *7; Decision II at *8. Second, at oral argument
on appeal, MPH’s counsel twice refused to concede that a
message sent using a packet with unencrypted addressing
information could not infringe the claims. Oral Arg. at
22:01–23:00, 28:50–29:21, available at https://oralargu-
ments.cafc.uscourts.gov/default.aspx?fl=21-1355_1207202
1.mp3; see 01 Communique Lab’y, Inc. v. Citrix Sys., Inc.,
889 F.3d 735, 743 (Fed. Cir. 2018) (“[C]laim terms must be
‘construed the same way for both invalidity and infringe-
ment.’”).
We hold that the Board adopted an erroneous claim
construction of “request message and/or a reply message
being encrypted” within claim 1 of the ’810 patent and
claim 4 of the ’581 patent that excludes “encrypted” mes-
sages because those messages are sent using packets with
certain unencrypted addressing information. The Chal-
lenged Patents contemplate that a message can still be con-
sidered “encrypted” if its packet has unencrypted “outer IP
header” information. We vacate the portions of the Board’s
final written decisions relying on that erroneous claim con-
struction and remand for further proceedings. 3
3 Apple alternatively argues that the Board’s deci-
sion should be remanded because the Board’s sua sponte
claim construction violated the Administrative Procedure
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14 APPLE INC. v. MPH TECHNOLOGIES OY
B. Apple’s Petition
Next, we address Apple’s argument that the Board
erred in declining to consider its unpatentability argu-
ments for dependent claims 6–8 of the ’581 patent under
Grounds 1 and 3, despite finding claim 5 of that patent un-
patentable under Ground 2. Appellant’s Br. 41.
Apple argues that where a challenger proves a claim
unpatentable, courts can only sustain dependent claims
based on “the language of the dependent claims them-
selves.” Appellant’s Br. 38. Because the Board found
claim 5 of the ’581 patent to be unpatentable, Apple urges
that the Board only needed to consider prior art to the ex-
tent necessary to address the remaining limitations added
in dependent claims 6–8. Appellant’s Br. 39.
MPH responds that Ground 1 of Apple’s petition relies
solely on Ishiyama in view of Murakawa to address claims
6–7 and omits the Ahonen reference that Apple relied upon
to address claim 5. Appellee’s Br. 52. Similarly, Ground 3
of Apple’s petition relies on Ishiyama, Murakawa, and For-
slöw to address claim 8, but, again, omits the Ahonen ref-
erence. Id. Because claims 6–8 depend from claim 5, MPH
argues that the Board correctly found that Apple failed to
carry its burden to address all of the relevant limitations
by not discussing Ahonen. 4 Appellee’s Br. 53–54; see
Act. Appellant’s Br. 29–37. Because we vacate the portions
of the Board’s decision relying on its erroneous claim con-
struction and remand for additional proceedings, we do not
reach this alternative argument.
4 MPH argues that we can nevertheless affirm the
Board’s determination as to claims 4–6 of the ’810 patent
because Apple relied on Ahonen to meet the intervening
limitations in claim 3 and did not include Ahonen in its
grounds challenging those claims. Appellee’s Br. 57–58.
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APPLE INC. v. MPH TECHNOLOGIES OY 15
Koninklijke Philips N.V. v. Google LLC, 948 F.3d 1330,
1335–37 (Fed. Cir. 2020).
We agree with MPH that the Board did not err in deny-
ing Apple’s petitions as to claims 6–8 of the ’581 patent. As
the Supreme Court has held, “in an inter partes review the
petitioner is master of its complaint and normally entitled
to judgment on . . . the claims it raises, not just those the
decisionmaker might wish to address.” SAS Inst., Inc. v.
Iancu, 138 S. Ct. 1348, 1355 (2018) (emphasis added); see
also Intuitive Surgical, Inc. v. Ethicon LLC, 25 F.4th 1035,
1041 (Fed. Cir. 2022) (“[A]s the master of its own petition,
Intuitive could have made its challenges more pointed and
specific . . . .”). This holding is consistent with the statu-
tory framework that requires a petition to identify “the
grounds on which the challenge to each claim is based.” 35
U.S.C. § 312(a)(3); see also 37 C.F.R. § 42.104(b) (requiring
petitioner to identify “the patents or printed publications
relied upon for each ground” and “where each element of
the claim is found in the prior art patents or printed publi-
cations relied upon”).
The Board is not limited by the “exact language of the
petition,” but it does not “enjoy[] a license to depart from
the petition and institute a different inter partes review of
his own design.” Koninklijke Philips, 948 F.3d at 1336
(quoting SAS, 138 S. Ct. at 1356); see also Sirona Dental
Sys. GmbH v. Institut Straumann AG, 892 F.3d 1349, 1358
(Fed. Cir. 2018) (finding “no error” in Board’s decision “not
to decide grounds of unpatentability not raised in the peti-
tion”). In Koninklijke Philips, Google’s petition included
The Board did not reach this issue because it found Apple
did not demonstrate claim 1 to be unpatentable. Decision
I at *9, 22. Because we vacate the portions of the Board’s
decisions based on its construction of an “encrypted” re-
quest or reply message in claim 1, the Board should decide
whether to consider this issue on remand.
Case: 21-1355 Document: 43 Page: 16 Filed: 09/08/2022
16 APPLE INC. v. MPH TECHNOLOGIES OY
two grounds: (1) anticipation based on Synchronized Mul-
timedia Integration Language 1.0 Specification (“SMIL
1.0”), and (2) obviousness based on “SMIL 1.0 in light of the
general knowledge of the [skilled artisan] regarding distrib-
uted multimedia presentation systems as of the priority
date.” 948 F.3d at 1333–34. Google relied on a prior art
reference referred to as “Hua” to demonstrate the state of
the art. Id. at 1334. The Board instituted on three grounds:
the two identified in Google’s petition and a third present-
ing obviousness based on SMIL 1.0 and Hua. Id. at 1334.
Although we found it proper for the Board to institute
Ground 2 based on SMIL 1.0 and the “general knowledge”
of a person of skill in the art, we held the Board erred in
instituting a ground based on SMIL 1.0 and Hua “because
Google did not advance such a combination of references in
its petition.” Id. at 1337.
Here, we agree the Board properly declined to consider
Ahonen in Grounds 1 and 3 of the ’581 patent’s IPR. See
Decision II at *20, 27. Apple only raised Ahonen in Ground
2, which challenged claims 3 and 5 of the ’581 patent. Id.
at *3. Even though claims 6–8 depend from claim 5, Apple
did not include Ahonen in Grounds 1 and 3 challenging
those claims, nor did it address or reference Ahonen in its
substantive analysis. J.A. 3312–16, 3323–26. The Board
did not err by declining to consider arguments that Apple
did not make. See Koninklijke Philips, 948 F.3d at 1337.
Apple contends the Board exalted “form over sub-
stance” by requiring Apple to include Ahonen in Grounds 1
and 3, Appellant’s Br. 46, but these requirements have a
practical impact as well. For example, Apple’s Ground 3
relies on Ishiyama, Murakawa, and Forslöw. J.A. 3323–26.
Apple presented no argument as to why a skilled artisan
would be inclined to combine the teachings of Ishiyama,
Murakawa, Forslöw, and Ahonen. J.A. 3323, 3326. We
have previously reversed Board decisions that found a mo-
tivation to combine where the petitioner presented only
threadbare arguments to support its combination, let alone
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APPLE INC. v. MPH TECHNOLOGIES OY 17
where a party entirely failed to address one of the refer-
ences it sought to combine. See, e.g., TQ Delta, LLC v. Cisco
Sys., Inc., 942 F.3d 1352, 1359 (Fed. Cir. 2019) (“[A] con-
clusory assertion with no explanation is inadequate to sup-
port a finding that there would have been a motivation to
combine.”).
Apple cites several cases for the general proposition
that where a parent claim is invalid, its dependent claims
may be similarly invalid. Appellant’s Br. 38–39. Those
cases are distinguishable because they do not address the
situation at hand, i.e., where a petitioner did not address
all of a claim’s limitations in its petition. In Ormco Corp.
v. Align Technology, Inc., we explained that invalidating
one claim can inform the patentability of other claims that
lack “patentably significant” differences. 498 F.3d 1307,
1320 (Fed. Cir. 2007). In Soverain Software LLC v. Victo-
ria’s Secret Direct Brand Management, LLC, we applied
collateral estoppel regarding the invalidity of a dependent
claim because “transmitting a hypertext statement over the
internet, rather than over a generic network” did not mate-
rially alter the invalidity analysis. 778 F.3d 1311, 1319–20
(Fed. Cir. 2015) (emphases added). And in MaxLinear, Inc.
v. CF CRESPE LLC, we explained that collateral estoppel
often “requires the invalidation of related claims that pre-
sent identical issues of patentability.” 880 F.3d 1373, 1374,
1377 (Fed. Cir. 2018). But these cases do not involve a pe-
titioner who did not address each of a dependent claim’s
intervening limitations in a single ground.
Apple’s citation to Soverain Software LLC v. Newegg
Inc., 728 F.3d 1332, 1335 (Fed. Cir. 2013), is similarly in-
apposite. See Appellant’s Br. 40–41. There, we explained
that if the parties do not “separately argue” or distinguish
a dependent claim and the independent claim it incorpo-
rates, “the claims rise or fall together.” Newegg, 728 F.3d
at 1335. By contrast, here Apple separately argued the pa-
tentability of claims 6–8 in Grounds 1 and 3 from claim 5
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18 APPLE INC. v. MPH TECHNOLOGIES OY
in Ground 2, such that we cannot say the claims of Grounds
1, 2, and 3 necessarily rise and fall together.
CONCLUSION
We vacate the Board’s patentability determinations for
claims 1–6 of the ’810 patent and claim 4 of the ’581 patent
based on its erroneous claim construction of “encrypted.”
We affirm the Board’s patentability determination that Ap-
ple failed to meet its burden as to claims 6–8 of the ’581
patent. We remand to the Board for further proceedings
consistent with this opinion.
AFFIRMED-IN-PART, VACATED-IN-PART, AND
REMANDED
COSTS
No costs.