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N OTE: This disposition is nonprecedential.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
______________________
2024-1419
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2022-
01002.
______________________
Decided: January 13, 2026
______________________
N ITIKA G UPTA F IORELLA , Fish & Richardson P.C., Wil-
mington, DE, argued for appellant. Also represented by
ALEXANDER MICHAEL P ECHETTE , Boston, MA; D ANIEL
HARAN WADE , New York, NY; D EBRA J ANECE MCC OMAS ,
Haynes and Boone, LLP, Dallas, TX; ANGELA M. O LIVER ,
Washington, DC; L AURA VU, San Francisco, CA.
P HILIP G RAVES , Graves & Shaw LLP, Los Angeles, CA,
argued for appellee. Also represented by GREER N. SHAW .
______________________
Case: 24-1419 Document: 60 Page: 1 Filed: 01/13/2026

-- 1 of 6 --

APPLE INC. v. SMART MOBILE TECHNOLOGIES LLC 2
Before D YK, CHEN, and STOLL , Circuit Judges.
STOLL , Circuit Judge.
Apple Inc. appeals the final written decision of the Pa-
tent Trial and Appeal Board, determining that Apple did
not prove by a preponderance of the evidence that the chal-
lenged claims of U.S. Patent No. 9,191,083 are unpatenta-
ble under 35 U.S.C. § 103. For the following reasons, we
vacate and remand the Board’s final written decision.
Apple raises two primary issues on appeal. First, Ap-
ple challenges the Board’s construction requiring the “plu-
rality of antennas” to include at least some bidirectional
antennas. Second, Apple argues that the Board erred by
not addressing Apple’s alternative arguments made in re-
sponse to Smart Mobile Technologies LLC’s claim construc-
tion proposed after institution. We have jurisdiction under
28 U.S.C. § 1295(a)(4)(A).
I
We begin with the Board’s claim construction. Claim 1
of the ’083 patent is representative and recites:
1. A network box which is portable and wireless
enabled comprising:
a plurality of antennas;
a plurality of ports; and
a communication component coupled to the plural-
ity of antennas, the communication component in-
cluding a processor, a transmitter, and a receiver,
the communication component configured to trans-
mit a first data stream by simultaneously trans-
mitting a first plurality of signal streams using the
plurality of antennas, the first plurality of signal
streams collectively representing the first data
stream,
Case: 24-1419 Document: 60 Page: 2 Filed: 01/13/2026

-- 2 of 6 --

APPLE INC. v. SMART MOBILE TECHNOLOGIES LLC 3
the communication component configured to re-
ceive a second data stream by simultaneously re-
ceiving a second plurality of signal streams using
the plurality of antennas and generating the second
data stream from the second plurality of signal
streams;
wherein the communication component is config-
ured to communicate via a first frequency band us-
ing a wireless communication protocol;
wherein the device is configured to process the first
data stream and the second data stream in parallel
and to process multiple channels; and
wherein the portable network box device is config-
ured to transmit and receive a plurality of data
from and to a separate network switch box over at
least one network path.
U.S. Patent No. 9,191,083 col. 11 l. 56–col. 12 l. 14 (empha-
ses added). The Board “determine[d] the claims require a
set of antennas in which at least some of the antennas are
for both transmitting and receiving.” J.A. 13. It disagreed
with Apple “that two separate sets of antennas—one set of
transmitting antennas and a separate, nonoverlapping set
of receiving antennas—fall within the scope of the chal-
lenged claims.” Id.
We agree with the Board that “the plain language of
the claims[,] read in the context of the Specification,” re-
quires at least some bidirectional antennas. J.A. 15. The
plain language of the claim refers to a “plurality of anten-
nas” and “using the plurality of antennas” to transmit and
receive. See ’083 patent col. 11 l. 56–col. 12 l. 14. And, as
noted by the Board, the specification “repeatedly and con-
sistently describes using the same antennas for both trans-
mitting and receiving data streams.” J.A. 14 (emphases
removed); see, e.g., ’083 patent Fig. 4, col. 4 ll. 14–36 (dis-
closing a “dual antenna, dual T/R unit”); see also
Case: 24-1419 Document: 60 Page: 3 Filed: 01/13/2026

-- 3 of 6 --

APPLE INC. v. SMART MOBILE TECHNOLOGIES LLC 4
’083 patent Fig. 9, col. 6 l. 64–col. 7 l. 20 (depicting multi-
ple channels 912 between two wireless devices as double-
ended arrows). While our precedent counsels against read-
ing embodiments from the specification into the claims, the
Board’s interpretation is consistent with the specification
and the claim language, which we read as being directed to
this embodiment.
For these reasons, we agree with and adopt the Board’s
construction that the challenged claims require at least
some bidirectional antennas. We note that Smart Mobile
agrees that the Board’s construction does not require an-
tennas that simultaneously transmit and receive but only
“that at least some of the antennas in the plurality be
switchable between a receive and a send mode.” Oral Arg.
at 14:32–14:51, https://www.cafc.uscourts.gov/oral-argu-
ments/24-1419_12032025.mp3.
II
We move to Apple’s argument that the Board erred in
“declin[ing] to consider [Apple’s] alternative argument”
that, even if the Board properly interpreted the challenged
claims to require some bidirectional antennas, Apple’s
prior art reference, Paulraj,1 satisfies that limitation. Ap-
pellant’s Br. 24–25. Apple analogizes the circumstances
here to those in Axonics, Inc. v. Medtronic, Inc., 75 F.4th
1374 (Fed. Cir. 2023), where we vacated the Board’s deci-
sions and, on remand, ordered the Board to consider the
petitioner’s arguments made in response to the patent
owner’s claim construction proposed after institution. We
agree with Apple.
In Axonics, the Board, at institution, determined “no
term require[d] express construction.” 75 F.4th at 1378 (ci-
tation omitted). After institution, the patent owner pro-
posed a new construction that it did not raise in its
1 U.S. Patent No. 6,351,499.
Case: 24-1419 Document: 60 Page: 4 Filed: 01/13/2026

-- 4 of 6 --

APPLE INC. v. SMART MOBILE TECHNOLOGIES LLC 5
preliminary response. Id. In reply, the petitioner put forth
arguments that even under the patent owner’s newly pro-
posed construction, the prior art references still satisfied
the challenged limitations. Id. at 1379. In support, the pe-
titioner submitted a supplemental expert declaration. Id.
The Board refused to consider the petitioner’s evidence un-
der the new construction and found that the petitioner “had
not identified anywhere in the petition” where arguments
directed to the new construction “had originally been made
and, for that reason, considered them to be improper reply
arguments.” Id. We vacated, holding that “where a patent
owner in an IPR first proposes a claim construction in a
patent owner response, a petitioner must be given the op-
portunity in its reply to argue and present evidence . . . un-
der the new construction.” Id. at 1384.
This case falls squarely under Axonics. Here, the pa-
tent owner, Smart Mobile, did not propose its understand-
ing of the scope of the limitations at issue—“plurality of
antennas” and “using the plurality of antennas”—until its
response after institution. See J.A. 11 (citing J.A. 1374,
1378–81). Then the petitioner, Apple, presented argument
and evidence in its reply that even under Smart Mobile’s
new interpretation, Paulraj still satisfied the limitations.
See J.A. 16 (citing J.A. 1618–22). The Board, in the final
written decision, construed “plurality of antennas” and “us-
ing the plurality of antennas” substantially in line with
Smart Mobile’s understanding. See J.A. 13 (“Although we
do not understand the claims to require both transmission
and reception ‘via all antennas’ all of the time, we deter-
mine the claims require a set of antennas in which at least
some of the antennas are for both transmitting and receiv-
ing.”). But notably, the Board refused to consider Apple’s
reply arguments because it determined those arguments
were “not grounded in or supported by the Petition or
within the scope of reasonable reply arguments.” J.A. 16;
see also Axonics, 75 F.4th at 1379. In so refusing, the
Board erred.
Case: 24-1419 Document: 60 Page: 5 Filed: 01/13/2026

-- 5 of 6 --

APPLE INC. v. SMART MOBILE TECHNOLOGIES LLC 6
By adopting a construction proposed after institution
and subsequently refusing to consider argument and evi-
dence in direct response to that newly proposed construc-
tion, the Board did not allow Apple an adequate
opportunity to respond. See Axonics, 75 F.4th at 1383
(“[U]nder the APA, when the Board adopts a new claim
construction following institution, an IPR petitioner must
have adequate notice and an opportunity to respond under
the new construction. In particular, the petitioner must be
afforded a reasonable opportunity in reply to present argu-
ment and evidence under that new construction.”). Accord-
ingly, we vacate and remand for the Board to consider
Apple’s evidence presented in reply.
III
For the foregoing reasons, we adopt the Board’s claim
construction. We also vacate the Board’s decision and re-
mand for the Board to consider Apple’s reply arguments
and evidence in the first instance.
VACATED AND REMANDED
COSTS
No costs.
Case: 24-1419 Document: 60 Page: 6 Filed: 01/13/2026

-- 6 of 6 --