`
`NOTE: This disposition is nonprecedential.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
`
`
`
`Case: 21-1355 Document: 43 Page: 4 Filed: 09/08/2022
`
`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
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`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
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`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
`forfeited2 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
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`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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`APPLE INC. v. MPH TECHNOLOGIES OY
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`(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
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`13
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`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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`APPLE INC. v. MPH TECHNOLOGIES OY
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`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.
`
`
`
`
`Case: 21-1355 Document: 43 Page: 15 Filed: 09/08/2022
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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
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`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
`
`
`
`Case: 21-1355 Document: 43 Page: 17 Filed: 09/08/2022
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`APPLE INC. v. MPH TECHNOLOGIES OY
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`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 incorp