28 F.4th 254
Fed. Cir.2022Background
- Apple appealed Board IPR final written decisions that held Apple failed to prove certain dependent claims of three related patents (U.S. Pat. Nos. 9,712,494; 9,712,502; 9,838,362) would have been obvious.
- The patents describe an intermediate computer that forwards securely encrypted payloads by matching a unique identity to a translation table and forwarding without decrypting, avoiding tunneling overhead.
- Apple relied primarily on RFC 3104 (RSIP) and Grabelsky patent as prior art to show obviousness.
- The Board construed multiple claim terms (e.g., “receive from… sent to,” “information fields,” “substitute,” and “modify”) and found RFC 3104/Grabelsky did not teach several limitations; it also discounted Apple’s expert testimony as conclusory/hindsight.
- The Federal Circuit reviewed claim constructions de novo and factual findings for substantial evidence and affirmed the Board on all challenged issues; costs awarded to respondent MPH.
Issues
| Issue | Apple’s Argument | MPH / Board’s Argument | Held |
|---|---|---|---|
| Whether “intermediate computer configured to receive from a mobile computer a secure message sent to the first network address” requires the mobile computer to send directly to that address | Passive phrasing does not require direct sending; eventual delivery suffices | Plain meaning and spec link sender and destination; requires direct sending to first network address | Affirmed: direct sending required; RFC3104 does not disclose this |
| Whether plural “information fields” can include a single field (claim 4 ’494 / claim 5 ’362) | Plural may mean one or more; statutory/linguistic presumptions favor singular-includes-plural | Ordinary English/patent law presumes plural = two or more absent contrary context | Affirmed: “information fields” requires two or more fields; Grabelsky’s single-field disclosure insufficient |
| Whether “substitute the unique identity” permits merely adding an outer header (RFC3104 tunneling) (claim 2 ’494 / claim 3 ’362) | Adding a new header results in a different header and therefore satisfies substitution | Spec disparages tunneling; “substitute” means change/replace/modify, not merely add | Affirmed: adding a header is not substitution under claim construction; RFC3104 fails to teach it |
| Whether prior art teaches modifying/updating existing translation-table address fields or signaling address changes (claims 9/10/13 ’494/’362; claims 7–9 ’502) | Establishing RSIP/IPsec sessions or ASSIGNREQUESTRSIPSEC inherently communicates new addresses and creates/updates table fields | The claims require existing fields to be modified and an explicit signal that the intermediate computer knows the address changed; RFC3104’s messages relate to session setup, not signaling address changes | Affirmed: substantial evidence supports Board that RFC3104 does not teach modifying/updating existing fields or signaling address changes as claimed |
Key Cases Cited
- Cisco Sys., Inc. v. Int’l Trade Comm’n, 873 F.3d 1354 (Fed. Cir. 2017) (standard of review for claim construction and subsidiary facts)
- Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (plain-and-ordinary-meaning claim construction framework)
- Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362 (Fed. Cir. 2012) (exceptions when patentee acts as lexicographer or disavows scope)
- KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007) (obviousness framework and teaching-suggestion-motivation principles)
- TQ Delta, LLC v. Cisco Sys., Inc., 942 F.3d 1352 (Fed. Cir. 2019) (expert testimony must be tethered to evidence)
- InTouch Techs., Inc. v. VGO Commc’ns, Inc., 751 F.3d 1327 (Fed. Cir. 2014) (need for meaningful explanation of motivation to combine)
- Leggett & Platt, Inc. v. Hickory Springs Mfg. Co., 285 F.3d 1353 (Fed. Cir. 2002) (plural claim terms normally require more than one)
- Ariosa Diagnostics v. Verinata Health, Inc., 805 F.3d 1359 (Fed. Cir. 2015) (what prior art teaches is a question of fact)