United States Court of Appeals for the Federal Circuit

Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. IPR2019- 00820.

Apple Inc. moves unopposed to dismiss MPH Technol- ogies OY’s appeal and requests that each party bear its own costs upon the dismissal.

MPH TECHNOLOGIES OY v. APPLE INC.

(2) Each party shall bear its own costs.

Before KATHERINE K. VIDAL, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office.

The Office received a request for Director Review of the Adverse Judgment on Remand (Paper 55) for the above-captioned case.

The request was referred to me.

Upon consideration of the request, it is: ORDERED that the request for Director Review is denied; and FURTHER ORDERED that the Patent Trial and Appeal Board’s Adverse Judgment in this case is the final decision of the agency.

This case returns on remand from the United States Court of Appeals for the Federal Circuit in Apple Inc. v. MPH Techs.

On Petitioner’s appeal, the Federal Circuit held that we erred in our construction of a term, and as a result, vacated our judgment of no unpatentability for claim 4 and remanded to the Board for further proceedings.

Resp. We agree with Petitioner and determine that Patent Owner requested adverse judgment against itself by filing a statutory disclaimer for claim 4.

Resp. 4 (citing 37 C.F.R. § 42.2); see also Apple, 2022 WL 4103286, at *8 (affirming as to claims 6–8); 37 C.F.R. § 42.2 (“A decision is final only if it disposes of all necessary issues with regard to the party seeking judicial review, and does not indicate that further action is required.”).

We also find unavailing Patent Owner’s argument that regardless of whether the requirements of 37 C.F.R. § 42.73(b) are met, that the Rule is permissive and we should decline to enter an adverse judgment because otherwise we “would frustrate the policy of 37 C.F.R. 42.1(b) and the Federal Circuit’s mandate.” PO Rem.

First, claim 4 recites “the request message ... is encrypted,” and like for the -819 case, we found that Petitioner did not show that the cited art teaches this limitation.

After hearing arguments, we directed the parties to file simultaneously their proposals for what procedures on remand should govern these cases, including addressing the eleven items provided in Appendix 2 of SOP 9.

In addition, Patent Owner disputes that the effect of the statutory disclaimers are adverse judgments, and argues that no briefing or evidence is appropriate for this issue.

Having consider the parties’ written proposals and the arguments made during our call with the parties, we determine that no additional briefing as to issues related to claim construction is warranted at this time.

As suggested by the Federal Circuit, we have decided to consider this issue on remand because it may be dispositive for the remaining challenged claims for the -819 proceeding.

United States Court of Appeals for the Federal Circuit

Appeals from the United States Patent and Trademark Office, Patent Trial and Appeal Board in Nos. IPR2019-

In accordance with the judgment of this Court, entered September 8, 2022, and pursuant to Rule 41 of the Federal Rules of Appellate Procedure, the formal mandate is hereby issued.

Also represented by SETH W. LLOYD, JOSEPH R. PALMORE; RICHARD HUNG, San Francisco, CA; BITA RAHEBI, Los Angeles, CA.

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.

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.

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.

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.

Before KEVIN C. TROCK, JOHN D. HAMANN, and STACY B. MARGOLIES, Administrative Patent Judges.

Petitioner represents that Patent Owner does not oppose the Motions.

Each Motion is accompanied by an updated Power of Attorney (Paper 41), and updated Mandatory Notices (Paper 42) identifying David W. O’Brien as lead counsel and Andrew S. Ehmke as backup counsel, each of whom Petitioner represents is a registered practitioner.

Upon review of the record before us and for the reasons set forth in the Motions, Petitioner’s requests (i) to withdraw Michael D. Specht, Daniel S. Block, and Timothy L. Tang as counsel are granted, and (ii) to substitute David W. O’Brien and Andrew S. Ehmke as counsel are granted.

In consideration of the foregoing, it is hereby ORDERED that Petitioner’s Motions to Withdraw Current Counsel and Substitution New Counsel in the above-identified proceedings are granted; FURTHER ORDERED that Michael D. Specht, Daniel S. Block, and Timothy L. Tang are withdrawn as counsel for Petitioner in the above- identified proceedings effective as of the date of this Order; and FURTHER ORDERED that David W. O’Brien is recognized as lead counsel and Andrew S. Ehmke is recognized as backup counsel for Petitioner in the above-identified proceedings.