Apple Inc. v. Smart Mobile Technologies LLC

N OTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
APPLE INC.,
Appellant
v.
SMART MOBILE TECHNOLOGIES LLC,
Appellee
______________________
2024-1352
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2022-
00981.
______________________
Decided: January 21, 2026
______________________
ANGELA M. O LIVER , Haynes and Boone, LLP, Washing-
ton, DC, argued for appellant. Also represented by
ANDREW S. EHMKE, D EBRA J ANECE MCC OMAS , Dallas, TX;
ADAM CARL F OWLES , Plano, TX; L AURA VU, San Francisco,
CA.
G REER N. SHAW , Graves & Shaw LLP, Los Angeles, CA,
argued for appellee. Also represented by PHILIP G RAVES .
______________________
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APPLE INC. v. SMART MOBILE TECHNOLOGIES LLC 2
Before L OURIE, REYNA , and CHEN, Circuit Judges.
REYNA, Circuit Judge.
Apple Inc. appeals from a final written decision of the
United States Patent and Trademark Office’s Patent Trial
and Appeal Board, which found that Apple failed to prove
that the challenged claims of U.S. Patent No. 8,472,936
would have been invalid as obvious. Asserting issue pre-
clusion, Apple argues that the challenged claims disclose
substantively identical limitations as the claims that the
Board found invalid in prior inter partes review proceed-
ings. Apple also challenges the Board’s determination on
the basis that the Board made an erroneous claim construc-
tion. For the following reasons, we reverse in part, vacate
in part, and remand.
BACKGROUND
Apple Inc. (“Apple”) petitioned for inter partes review
(“IPR”) of three related patents owned by Smart Mobile
Technologies LLC (“Smart Mobile”): U.S. Patent
No. 8,472,936 (“’936 patent); U.S. Patent No. 8,761,739
(“’739 patent); and U.S. Patent No. 8,442,501 (“’501 pa-
tent). The three patents recite similar claims and share
the same specification. 1 The patents relate to a mobile de-
vice that is dynamically software configurable for a variety
of environments. The mobile device communicates with a
server that stores functional instruction sets and software.
When the mobile device moves to a new environment, it can
“switch itself for optimal performance” by downloading a
functional instruction set from the server. ’936 patent at
4:39–42.
1 We cite to the specification of the ’936 patent when
discussing the three patents’ common specification.
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APPLE INC. v. SMART MOBILE TECHNOLOGIES LLC 3
Claim 1 of the ’936 patent is reproduced below. The
appeal centers on the italicized term “dynamically configu-
rable.”
1. [1.0] A wireless communication system, compris-
ing:
[1.1] a wireless device which supports voice and
data communications;
[1.2] a server; and
[1.3] a memory, wherein a processor is communica-
tively coupled with the memory,
[1.4] wherein the memory stores functional instruc-
tions including instructions for use in providing a
plurality of functions to the wireless device, [1.5] at
least one of the functional instructions provided for
switching between one or more networks including
at least one public network, and
[1.6] wherein the memory further stores a plurality
of communication protocols, that facilitate commu-
nication between the server and the wireless de-
vice, and [1.7] wherein the server is configured to
send to the wireless device a plurality of functions,
[1.8] wherein the wireless device is dynamically
configurable from a first function to a second func-
tion to enable a plurality of functions at the wire-
less device and [1.9] wherein the wireless device is
configured for Internet access.
Id. at 9:20–39 (emphasis added).
Similar to the ’936 patent’s “dynamically configurable”
term, claim 1 of the ’739 patent has a “dynamic conversion”
term that was disputed by the parties. Claim 2 also recites
a “switch dynamically” limitation that the parties ad-
dressed in connection with claim 1. Claims 1 and 2 of the
’739 patent are reproduced below.
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APPLE INC. v. SMART MOBILE TECHNOLOGIES LLC 4
1. [1.0] A wireless communication system, compris-
ing:
[1.1] a wireless device which supports voice and
data communications;
[1.2] a server;
[1.3] a memory communicatively coupled to the
wireless device, wherein a processor is communica-
tively coupled with the memory,
[1.4] wherein the memory stores functional instruc-
tions for use in providing a plurality of functions to
the wireless device, [1.5] at least one of the func-
tional instructions provided for switching between
one or more networks including at least one public
or wireless carrier network, and
[1.6] wherein user specific information of the wire-
less device is stored on the server; and
[1.7] wherein the memory further stores a plurality
of communication protocols, that facilitate commu-
nication between a server and the wireless device,
and [1.8] wherein the server serves as a primary
repository or exchange to deliver various functions
to the wireless device, and [1.9] wherein the server
enables dynamic conversion of the wireless device
from a first function to a second function to provide
a plurality of functions at the wireless device.
2. The system of claim 1, wherein the wireless de-
vice is adapted to switch dynamically between local
networks and public carrier networks.
’739 patent at 9:25–50 (emphasis added).
Related Proceedings
Apple petitioned for review of the ’739 patent and ’501
patent in IPR Nos. IPR2022-00980 (“’980 IPR”) and
IPR2022-00808 (“’808 IPR”), respectively. Apple
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APPLE INC. v. SMART MOBILE TECHNOLOGIES LLC 5
challenged claim 1 of both patents based on U.S. Patent
No. 5,949,775 (“Rautiola”) in view of U.S. Patent
No. 5,689,708 (“Regnier”) and U.S. Patent No. 5,854,985
(“Sainton”).
In its ’980 IPR petition,2 Apple contended that the
claim terms of the ’739 patent should be given their plain
and ordinary meaning, with no term requiring specific con-
struction. The Board disagreed, instead tentatively con-
struing “dynamic conversion” in limitation [1.9] as
“conversion when and as needed and in real time.” See
J.A. 3103.
Smart Mobile argued that the Board should instead
construe “dynamic” to mean “when and as needed, respon-
sive to variable conditions and without the need for user in-
tervention” to execute the recited “conversion” or “switch.”
J.A. 2964 (emphasis added). Apple adopted the Board’s
construction, arguing that Smart Mobile’s proposal contra-
dicted the intrinsic record.
In its final decision, the Board declined to adopt a con-
struction, instead finding all challenged claims unpatenta-
ble under either party’s construction. Smart Mobile did not
file a notice of appeal from either final written decision in
the ’980 and ’808 IPRs, and the deadline to do so under 37
C.F.R. § 90.3(a)(1) has now expired.
Underlying Proceeding
In IPR No. IPR2022-00981 (“’981 IPR”), Apple peti-
tioned for review of claims 1, 8–11, 13, 15, 17, and 19 of the
’936 patent on two obviousness grounds. In Ground 1, Ap-
ple relied on the same combination of prior art references
as in the ’980 and ’808 IPRs: Rautiola in view of Regnier
2 The parties presented similar arguments and the
Board reached similar conclusions in the ’808 IPR. We cite
only to the ’980 IPR to avoid repetition.
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APPLE INC. v. SMART MOBILE TECHNOLOGIES LLC 6
and Sainton. The Board ultimately found that Apple failed
to prove unpatentability as to any of the challenged claims.
Its finding turned on its construction of the claim term “dy-
namically configurable” to mean “configurable when and as
needed and in real time, without the need for user inter-
vention.”
Apple appeals the Board’s final written decision in the
’981 IPR. We have jurisdiction pursuant to 28 U.S.C.
§ 1295(a)(4)(A).
D ISCUSSION
Apple raises two issues on appeal. First, Apple argues
that the Board’s finding in the ’980 and ’808 IPRs that
claim 1 of the ’739 and ’501 patents would have been obvi-
ous precludes the Board from reaching the opposite conclu-
sion regarding claim 1 of the ’936 patent in the ’981 IPR.
Second, Apple contends that the Board’s construction of the
word “dynamically” is not supported by the intrinsic record
or general claim construction principles. We address each
argument in turn.
We review the Board’s legal conclusions de novo and its
factual findings for substantial evidence. Almirall, LLC v.
Amneal Pharms. LLC, 28 F.4th 265, 271–72 (Fed. Cir.
2022). The ultimate question of issue preclusion is a legal
question. Google LLC v. Hammond Dev. Int'l, Inc., 54
F.4th 1377, 1380 (Fed. Cir. 2022). We review the issue of
claim construction of a patent claim de novo and underly-
ing fact findings for substantial evidence. Dionex Softron
GmbH v. Agilent Techs., Inc., 56 F.4th 1353, 1358 (Fed. Cir.
2023).
I. Issue Preclusion
Determining whether issue preclusion applies presents
a procedural question that we evaluate according to re-
gional circuit law. ParkerVision, Inc. v. Qualcomm Inc.,
116 F.4th 1345, 1355 (Fed. Cir. 2024). We apply this
court’s precedent, however, to questions of issue preclusion
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APPLE INC. v. SMART MOBILE TECHNOLOGIES LLC 7
that implicate substantive issues of patent law. Wisconsin
Alumni Resch Found. v. Apple Inc., 112 F.4th 1364, 1378
(Fed. Cir. 2024) (“WARF”).
A party seeking to prevail on issue preclusion must
show that (1) the issue sought to be precluded is the same
as that involved in a prior action; (2) the issue was actually
litigated; (3) the determination of the issue was essential
to the final judgment; and (4) the party against whom es-
toppel is invoked had a full and fair opportunity to litigate
the issue in the first action. In re Freeman, 30 F.3d 1459,
1465 (Fed. Cir. 1994). No party disputes that the third el-
ement is met here. Thus, we only address elements 1, 2,
and 4.
A.
We first consider whether the issue sought to be pre-
cluded in the ’981 IPR, i.e., whether claim 1 of the ’936 pa-
tent is unpatentable, is the “same” issue that was before
the Board in the ’980 IPR. See Appellant Br. 29–30 (argu-
ing that “[d]espite the minor differences in the claim limi-
tations, the same issue of patentability was at issue in both
the ’739 Patent and ’936 Patent IPRs”). We note that the
claims at issue do not recite identical language. We have
held, however, that patent claims need not be identical for
issue preclusion to apply. Ohio Willow Wood Co. v. Alps S.,
LLC, 735 F.3d 1333, 1342–43 (Fed. Cir. 2013). Instead, the
question is whether the differences between the claims
“materially alter the question of invalidity.” Id. at 1342.
A side-by-side, limitation-by-limitation comparison of
the claims reveals their marked similarity. See Table at
Appellant Br. 29–30. The respective claim limitations, in-
cluding the “dynamic conversion” and “dynamically config-
urable” limitations that were the focus of the parties’
arguments, have only minor differences. Smart Mobile nei-
ther contends that these minor differences affect the inva-
lidity analysis nor explains how claim 1 of the ’936 patent
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APPLE INC. v. SMART MOBILE TECHNOLOGIES LLC 8
is substantively distinct from the prior, invalidated claim 1
of the ’739 patent.
Moreover, the parties’ patentability and claim con-
struction arguments indicate that they understood the
claim language in the two claims to carry the same mean-
ing. Apple presented the same theory of obviousness in its
’980 IPR as in Ground 1 of its ’981 IPR: “§ 103 (Pre-AIA)
Rautiola in view of Regnier and Sainton.” J.A. 85, 2855.
Smart Mobile responded to the two petitions with nearly
identical patentability contentions. Compare J.A. 405–16
with J.A. 2992–3003. Regarding claim construction, the
parties proposed nearly identical constructions and argu-
ments for “dynamically” in the ’936 patent as for “dynamic”
in the ’739 patent. Compare J.A. 378–92 with J.A. 2964–
79; compare J.A. 441–51 with J.A. 3027–32.
In view of the claims’ similar language, as reflected by
the parties’ understanding in the record, we conclude that
claim 1 of the ’936 patent is substantially similar to claim 1
of the ’739 patent. The claims’ differences do not “materi-
ally alter the question of invalidity,” and, thus, the identity
of issues requirement for finding collateral estoppel is sat-
isfied. See Ohio Willow, 735 F.3d at 1342.
Instead of defining the issue based on Apple’s challenge
to claim 1 in the respective IPRs, Smart Mobile would focus
on the Board’s reliance on specific references for individual
claim limitations in the ’980 IPR final written decision.
Smart Mobile argues that “the ’936 [patent] IPR involved
different prior art asserted for ‘dynamically configurable’
(Rautiola-Regnier) than the prior art that the Board relied
on for ‘dynamic conversion’ in the [’980 and ’808] IPRs
(Sainton).” Appellee Br. 13–14.
But that argument is directed to a different form of pre-
clusion (e.g., whether a particular reference teaches a par-
ticular claim limitation) than the one at issue here. Under
Ohio Willow, issue preclusion can apply where the “issue”
is invalidity of an entire patent claim, as opposed to specific
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APPLE INC. v. SMART MOBILE TECHNOLOGIES LLC 9
elements or factual details within the claim. 735 F.3d at
1342–43. We applied issue preclusion in Ohio Willow to
invalidate a claim that was immaterially different from a
previously invalidated claim in a different patent. Id. Our
analysis did not turn on any single limitation or prior art
reference, but on the broader claim-by-claim analysis to an
already-invalidated claim.
Similarly, in Soverain Software, we applied this type of
issue preclusion to invalidate a dependent claim of a previ-
ously invalidated independent claim when the added limi-
tation did not materially alter the question of validity.
Soverain Software LLC v. Victoria’s Secret Direct Brand
Mgmt., LLC, 778 F.3d 1311, 1319 (Fed. Cir. 2015). And in
Google, we applied the same principle to invalidate claims
that we found to be materially identical. Google, 54 F.4th
at 1380–82. None of these cases required consideration of
whether a specific prior art reference taught a particular
claim limitation. Accordingly, Smart Mobile’s narrower
factual focus is irrelevant, and we reject it.
For the foregoing reasons, we conclude that the issue
sought to be precluded in the ’981 IPR is the same issue
that was before the Board in the ’980 IPR. To conclude oth-
erwise would allow a patentee to assert a claim substan-
tially similar to a claim previously found unpatentable by
the PTAB.
B.
We next consider whether the issue, i.e., whether claim
1 of the ’739 patent is unpatentable, was actually litigated
in the ’980 IPR. The requirement that the issue have been
actually litigated is generally satisfied “if the parties to the
original action disputed the issue and the trier of fact de-
cided it.” Freeman, 30 F.3d at 1466.
The record shows that Smart Mobile and Apple dis-
puted whether claim 1 of the ’739 patent is unpatentable.
The parties’ arguments centered on claim 1’s limitations
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APPLE INC. v. SMART MOBILE TECHNOLOGIES LLC 10
[1.5] and [1.9] and claim 2. See J.A. 2882–83,
J.A. 2892–2901 (Petition, citing teachings of Rautiola and
Sainton for claim limitation [1.5], reciting “switching be-
tween one or more networks,” and claim 2, reciting “switch
dynamically between local networks and public carrier net-
work.”); J.A. 2965–66 (Patent Owner Response, proposing
claim construction for “dynamic” as used in both claim lim-
itation [1.9]’s “dynamic conversion” and claim 2’s “switch
dynamically”); J.A. 2922–3004 (Patent Owner Response,
addressing Apple’s arguments regarding claim limitations
[1.5] and [1.9] and claim 2, including Apple’s reliance on
Sainton.)
The Board decided the issue, finding that Apple had
shown all challenged claims to be unpatentable. See J.A.
3119–27 (adopting Smart Mobile’s grouping of limitation
[1.9] with claim 2); J.A. 3127 (recognizing and rejecting
Smart Mobile’s arguments regarding Sainton and instead
finding Apple’s arguments persuasive). Because the par-
ties disputed the issue and the Board drew a final conclu-
sion, we find that the second requirement of issue
preclusion is satisfied.
C.
Finally, we consider whether Smart Mobile had a full
and fair opportunity to litigate the issue of whether claim
1 of the ’739 patent is unpatentable in the ’980 IPR. In
determining whether a party has had a full and fair oppor-
tunity to litigate, we look at (1) whether there were signif-
icant procedural limitations in the prior proceeding,
(2) whether the party had an incentive to litigate fully the
issue, and (3) whether effective litigation was limited by
the nature or relationship of the parties. Banner v. United
States, 238 F.3d 1348, 1354 (Fed. Cir. 2001). We conclude
that, based on the record before us, the “full and fair oppor-
tunity to litigate” requirement of issue preclusion is met.
As discussed above, Smart Mobile argued the validity of
claim 1 of the ’739 patent, including Sainton’s teaching of
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APPLE INC. v. SMART MOBILE TECHNOLOGIES LLC 11
“dynamic” under Smart Mobile’s construction. Smart Mo-
bile has not “presented, let alone supported, any allegation
of a legally significant disparity in incentives between the
present IPR and the two other [Sainton]-based IPRs at is-
sue.” Papst Licensing GMBH & Co. KG v. Samsung Elecs.
Am., Inc., 924 F.3d 1243, 1251–52 (Fed. Cir. 2019).
Finding all elements of issue preclusion satisfied, we
hold claim 1 of the ’968 patent unpatentable. The Board’s
decision as to the patentability of the dependent claims of
the ’968 patent rested entirely on its conclusion that
claim 1 was not unpatentable. Since the Board has not sep-
arately addressed the dependent claims, we vacate its de-
cision as to those claims and remand for further
consideration.
II. Claim Construction
Apple argues that the Board erred in construing “dy-
namically configurable” in claim 1 of the ’936 patent to re-
quire that configuration occur “without the need for user
intervention.” Apple contends that the Board’s construc-
tion improperly imports limitations from the specification
and relies on features not recited in claim 1. Apple also
argues that claim differentiation counsels against the
Board’s construction because claim 18, which recites
“wherein the wireless device is adapted to recognize its
proximity to various wireless networks and initiate a con-
figuration based thereon,” does require configuration with-
out user intervention.
The goal of claim construction is to give a claim term
the meaning understood by a person of ordinary skill in the
art at the time of invention. Aylus Networks, Inc. v. Apple
Inc., 856 F.3d 1353, 1358 (Fed. Cir. 2017). The skilled ar-
tisan’s understanding of the claim term is not limited to the
claim language surrounding the disputed term; it takes
into account the context in which the term is used. Phillips
v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005). This
context is usually provided by the specification, “the single
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APPLE INC. v. SMART MOBILE TECHNOLOGIES LLC 12
best guide to the meaning of a disputed term.” Vitronics
Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir.
1996). The ordinary meaning of a claim term is therefore
its meaning to the person of ordinary skill in the art after
reading the entire patent. Phillips, 415 F.3d at 1321.
Here, the plain language of the claims does not require
user intervention. We have held, moreover, that when a
patent ‘‘repeatedly and consistently’’ characterizes a claim
term in a particular way, it is proper to construe the claim
term in accordance with that characterization. GPNE
Corp. v. Apple Inc., 830 F.3d 1365, 1370 (Fed. Cir. 2016)
(citing VirnetX, Inc. v. Cisco Sys., Inc., 767 F.3d 1308, 1318
(Fed. Cir. 2014); ICU Med., Inc. v. Alaris Med. Sys., Inc.,
558 F.3d 1368, 1374–75 (Fed. Cir. 2009)). The specification
of the ’936 patent includes numerous examples of switching
from a first function to a second function. The specification
repeatedly and consistently characterizes the switching as
occurring without user intervention. For example, the mo-
bile device “when in the home wireless network mode may
switch itself for this task for optimal performance by down-
loading/uploading” functional instruction software. J.A.
64, 5:1–4 (emphasis added); see also J.A. 65, 8:9–12 (the
mobile device “switches itself” for optimal performance);
J.A. 65, 8:36–39 (same). In another example, the mobile
device in conjunction with the server “can decide the pre-
ferred mode to be in.” J.A. 63, 4:8–9. The specification ex-
plains that “[t]he mobile device is dynamically software
reconfigurable for the various environments.” J.A. 62,
2:35–36. Moreover, the specification contains no descrip-
tion of the user of the device issuing commands to the de-
vice to cause it to switch functions.
The Board’s construction is further reinforced by the
applicant’s statements in the prosecution history of the
’936 patent’s great-grandparent, the ’950 patent.
J.A. 16–18; see Phillips, 415 F.3d at 1317 (“[T]he prosecu-
tion history can often inform the meaning of the claim lan-
guage by demonstrating how the inventor understood the
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APPLE INC. v. SMART MOBILE TECHNOLOGIES LLC 13
invention . . . .”) There, the applicant distinguished the
claimed invention from a prior art reference by character-
izing the prior art as “manual” and “not enabled for dy-
namic sensing nor conversion.” See J.A. 2360. By
highlighting that the prior art required manual operation,
the applicant explicitly positioned the claimed invention as
“dynamic,” supporting that the claimed “dynamic” func-
tionality operates without user intervention.
In view of the consistent disclosure, corroborated by the
prosecution history, we agree that the proper construction
of “dynamically configurable” includes configuration “with-
out the need for user intervention.”
Apple’s claim differentiation argument does not alter
this conclusion. Claim differentiation is ‘‘not a hard and
fast rule,’’ but rather a presumption that can be overcome
when the intrinsic evidence dictates a contrary construc-
tion. Seachange Int’l, Inc. v. C–COR, Inc., 413 F.3d 1361,
1369 (Fed. Cir. 2005). Because the plain language does not
require user intervention and the specification so consist-
ently describes switching as occurring without the need for
user intervention, the presumption is overcome here. In
addition, claim 18 differs from claim 1 in more ways than
just “initiat[ing] a configuration,’’ so any inference derived
from claim 18, without more, is weak at best.
We conclude that the Board properly construed “dy-
namically configurable” to mean “configurable when and as
needed and in real time, without the need for user inter-
vention.” Because the Board found the claims of the ’729
patent unpatentable under a construction that specifies
“without the need for user intervention,” our conclusion
here does not disturb our finding on issue preclusion. See
J.A. 3120.
CONCLUSION
We have considered the parties’ remaining arguments
and find them unpersuasive. For the reasons stated above,
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APPLE INC. v. SMART MOBILE TECHNOLOGIES LLC 14
we reverse the Board’s judgment regarding claim 1 of the
’968 patent. We vacate its judgment regarding dependent
claims 8–11, 13, 15, 17, and 19 and remand for considera-
tion of the patentability of those claims.
REVERSED-IN-PART, VACATED-IN-PART, AND
REMANDED
COSTS
Each party shall bear its own costs for this appeal.
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