Introduction

MPH Technologies (“The Respondent”) owned three patents on forwarding messages from one computer to another, particularly using a secured intermediate computer network without extra encapsulation overhead.

Apple Inc. (“The Appellant”) petitioned for inter partes review (“IPR”) of the Respondent’s patents before the United States Patent and Trademark Office, Patent and Appeal Board (“The Board”).

The Appellant relied on a combination of the Request for Comments 3104 (“RFC3104”) and a US Patent (“Grabelsky”) to challenge the claims in the three patents. In addition, a series of claim construction disputes were raised during the proceedings.

The Board held that the Appellant failed to show that several dependent claims of each of the three patents would have been obvious. Especially given the combination.

Discussion

The Appellant appealed before the United States Court of Appeals for the Federal Circuit (“The Federal Circuit”). The Appellant raised four claim construction disputes based on the Board’s decision, as follows:

First, the Appellant argued that the Board erred in finding that the claim limitation information field requires two or more field. Second, the Board erred in the interpretation of the message sent from the mobile computer directly to the first address. The third claim was that the Board erred in construing the term “substitute” in the claim limitation and the fourth claim was that RFC3104 taught the claim limitation “modify the translation table entry address fields”, because the claim limitation was merely functional and covered any embodiments resulting from the table. Specifically, embodiments with different address fields, including new address fields.

In its decision, the Federal Circuit rejected the Appellant’s arguments on all the four claim construction disputes. The Federal Circuit explained that common English usage presumed that plural term refers to two or more items, on the first claim. Therefore, the term “information fields” was plural and required more than one field. Also, nothing in the claim language suggested otherwise. On the second claim, the Federal Circuit held that plain language established direct sending of the message from the mobile computer to the first address.

On the third claim, the Federal Circuit found that the written description disparaged the prior art solution of tunneling. Thus, the Board was correct in construing the term “substitute” in the claim limitation, considering that adding a new header did not satisfy the substitution required by the claims. On the fourth claim, the Federal Circuit affirmed the Board’s decision that modifying required having an existing address in the table to modify. Also, modification occurred only when the mobile computer changed its address.

Moreover, this would make the intermediate computer know the mobile phone's address changed. Therefore, suggesting the existence of an address prior to the modification.

Conclusion

The Federal Circuit gave reasons for rejection of all the Appellant’s four claim construction argument. Thus, the Board’s decision on the challenged claims of the Respondent’s three patents was affirmed because the challenged claims of the three patents would not have been evident over the combination of RFC3104 and Grabelsky.

Source: https://cafc.uscourts.gov/opinions-orders/21-1532.OPINION.3-9-2022_1918965.pdf

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