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N OTE: This disposition is nonprecedential.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
______________________
2024-1623
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2022-
01004.
______________________
Decided: February 27, 2026
______________________
D EBRA J ANECE MC C OMAS , Haynes and Boone, LLP,
Dallas, TX, argued for appellant. Also represented by
ANDREW S. EHMKE; ANGELA M. O LIVER , Washington, DC;
L AURA V U, San Francisco, CA; CLINT S. WILKINS , Plano,
TX.
P HILIP G RAVES , Graves & Shaw LLP, Los Angeles, CA,
argued for appellee. Also represented by GREER N. SHAW .
______________________
Before D YK, T ARANTO, and CUNNINGHAM , Circuit Judges.
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APPLE INC. v. SMART MOBILE TECHNOLOGIES LLC 2
Opinion for the Court filed by Circuit Judge T ARANTO.
Opinion concurring-in-part and dissenting-in-part filed by
Circuit Judge D YK.
T ARANTO, Circuit Judge.
Smart Mobile Technologies LLC owns U.S. Patent
No. 9,614,943, whose claims 1–9 and 12–20 are the subject
of an inter partes review (IPR) instituted by the Patent and
Trademark Office (PTO) on a petition filed by Apple Inc.
that asserted obviousness on nine overlapping grounds.
The PTO’s Patent Trial and Appeal Board held claims 1, 5–
9, and 12–14 unpatentable for obviousness but upheld
claims 2–4 and 15–20. Samsung Electronics Co., Ltd.
v. Smart Mobile Technologies LLC, No. IPR2022-01004,
2023 WL 8412856, at *1 (P.T.A.B. Dec. 4, 2023) (Decision).
The Board rested its upholding of the identified claims on
findings that Apple had not shown, for two pairs of prior-
art references, adequate rationales for combining the ref-
erences. Id. at *21–24, *31–39. Apple appeals as to claims
2–4 and 15–20. We affirm.
I
A
The ’943 patent, titled “System to Interface Internet
Protocol (IP) Based Wireless Devices With Subtasks and
Channels” and having a priority chain back to 1996, relates
to “provid[ing]” “multiple Internet Protocol (IP) based wire-
less data transmissions . . . between a wireless device and
a server.” ’943 patent (Abstract). The patent describes a
need in the prior art for wireless devices to have multiple
transmitters and receivers in order to, among other things,
improve signal fidelity and bandwidth. Id., col. 1, lines 48–
51; see id., col. 3, line 26, through col. 4, line 38. It thus
proposes to add “multiple antennas” to wireless devices, in
particular cellular telephones, id., col. 1, lines 48–51, but
also to network components that typically are stationary,
see id., col. 4, lines 7–11; col. 5, lines 9–48. It calls those
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APPLE INC. v. SMART MOBILE TECHNOLOGIES LLC 3
network components “network switch box[es],” the perti-
nent difference from a cellular telephone being that a net-
work switch box “operates at a network system level
capable of coordinating the operations of a number of mo-
bile and other devices in one or more networks” while a cel-
lular telephone “performs at a personal level.” Id., col. 5,
lines 43–48.
In one embodiment, the patented devices may partici-
pate in a virtual private network (VPN). See id., col. 8,
lines 17–41; see also id., fig. 12. The specification describes
an exemplary VPN that “can be under the control of a sin-
gle . . . [s]erver” and in which “[e]ach device in [the] VPN
. . . may operate wireless or wired devices such as the de-
vices in [the] VPN[.]” Id., col. 8, lines 30–36. The specifi-
cation repeatedly describes a VPN as enabling “supervision
and control” of the corresponding devices by a computer
server outside the VPN, id., col. 8, line 40; see also, e.g., id.,
col. 8, lines 33, 38, 51, 63, so that, for example, a cellular
telephone in a VPN may “communicat[e] from/to the net-
work switch box or from/to an outside source, such as a [cel-
lular] service provider,” id., col. 8, lines 55–57.
The ’943 patent’s claim 3, which depends on claim 1,
includes a limitation related to the VPN embodiment that
is particularly relevant in this appeal. Independent claim
1 claims “[a] wireless communication device” having a plu-
rality of antennas capable of wireless communication and
parallel processing of multiple data streams. Id., col. 11,
line 63, through col. 12, line 9. Claim 3 states:
3. The device of claim 1, further in communication
with a network switch box configured with a plu-
rality of ports and configured to connect to a plu-
rality of networks to forward packets between
different networks and join a virtual network.
Id., col. 12, lines 16–20 (emphasis added). Claim 4 depends
on claim 3 but adds nothing that is significant for present
purposes. See id., col. 12, lines 21–25. The language of the
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APPLE INC. v. SMART MOBILE TECHNOLOGIES LLC 4
other claims on appeal (claims 2 and 15–20) is not relevant
to Apple’s arguments.
B
Apple—along with others no longer party to the case,
see Decision, at *1; ECF Nos. 22, 24—filed a petition for an
IPR of the ’943 patent in May 2022. J.A. 227. Apple as-
serted nine grounds of obviousness involving a total of six
references against, collectively, claims 1–9 and 12–20. J.A.
138–39. Apple alleged that claims 3 and 4 would have been
obvious over the combination of references “Byrne” (which
is European Patent Application No. 0660626 A2) and
“WO748” (which is International Publication
No. WO 98/27748). J.A. 162–68. Apple further alleged
that claims 1–9 and 12–20 were unpatentable for obvious-
ness over at least one of five prior-art combinations involv-
ing “Raleigh” (which is U.S. Patent No. 6,144,711) and
Byrne. J.A. 178–224. Finally, Apple asserted three other
grounds of obviousness involving Byrne but not WO748 or
Raleigh against claims 1, 5–9, and 12–14. J.A. 138.
Byrne, titled “Multi-mode Radio Telephone,” describes
a “radio telephone” capable of operating in two modes: cord-
less, which is short-range, and cellular, which is longer-
range. See J.A. 1352; J.A. 1353, col. 1, line 30, through col.
2, line 41. When operating in either mode, Byrne’s tele-
phone employs known encryption or other security
measures. See J.A. 1356, col. 8, lines 16–38.
WO748, called “Wireless Communications Station and
System,” J.A. 1329, identifies and addresses a problem of
poor wireless communications reception in buildings, see
J.A. 1331, lines 24–26. According to WO748, wiring a
building for a given signal can improve reception indoors,
but running wires for several different kinds of communi-
cation is duplicative. See J.A. 1329 (Abstract); J.A. 1331,
lines 24–30. Figure 1 of WO748 (shown below), J.A. 1343,
depicts a solution to that problem using a single “base unit
10” wired for multiple signals, J.A. 1334, lines 26–30. The
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APPLE INC. v. SMART MOBILE TECHNOLOGIES LLC 5
base unit is connected to various “remote unit[s] 20” within
a building, each remote unit having multiple antennas so
as to provide wireless connectivity for multiple signals,
such as cellular signals. J.A. 1335, lines 5–14.
The final reference relevant here, Raleigh, is titled
“Spatio-temporal Processing for Communication.” J.A.
1255. Raleigh describes how, in a communications system
having multiple receivers and transmitters, transmissions
traveling along different paths can result in interference
and an attenuated signal. See J.A. 1283, col. 1, lines 21–
30. To address that problem, Raleigh describes a procedure
for reconstructing the original signal. See id., col. 2, lines
51–63. Figure 4 of Raleigh depicts a system in which its
procedure can be implemented:
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APPLE INC. v. SMART MOBILE TECHNOLOGIES LLC 6
J.A. 1260. Remote units 170a and 170b (not to be confused
with WO748’s remote units) are shown as a building and a
vehicle, and each has multiple antennas in communication
with base 152. J.A. 1287, col. 10, lines 22–29; see J.A. 1288,
col. 11, lines 44–50.
Apple’s petition, as to its Byrne-WO748 theory of un-
patentability of claims 3 and 4, asserted that “it would have
been obvious to implement WO748’s infrastructure (e.g.,
‘remote units 20’) using cellular and cordless systems such
that Byrne-WO748’s telephone communicates with ‘remote
units 20[.]’” J.A. 162. To meet the “virtual network” limi-
tation of claim 3, not expressly disclosed by either refer-
ence, Apple relied on the testimony of its expert, Dr.
Jensen, that virtual networks were within the knowledge
of a relevant artisan and that it would have been obvious
to modify Byrne-WO748 to include a VPN. See J.A. 167
(citing J.A. 1152–53). According to the petition, “it would
have been known that network devices/interfaces (like
Byrne’s telephone and WO748’s remote and base units) are
part of a virtual network,” and VPNs had “various benefits”
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APPLE INC. v. SMART MOBILE TECHNOLOGIES LLC 7
that would have motivated a relevant artisan to modify
Byrne and WO748. Id. (emphasis removed). Dr. Jensen,
elaborating on those benefits, stated that VPNs enable “se-
curing the network” and “improve network scalability.”
J.A. 1152–53. Because the modification of WO748 alone to
include a VPN is not in dispute in the present appeal, for
simplicity we hereafter generally treat the VPN as if it
were a part of WO748, referring to “WO748’s VPN.”
For all the Raleigh-Byrne grounds of unpatentability,
applicable to all the claims at issue on Apple’s appeal (3, 4,
15–20), the petition asserted, as relevant here, that “the
telephone or remote unit in the combination [would have
been] implemented using Raleigh’s [procedure] for long-
range . . . communication with Byrne’s protocols for short-
range, cordless communication.” J.A. 180. Apple repeat-
edly said or implied that the functionality of Raleigh should
be implemented in Byrne’s device to yield a telephone. See,
e.g., J.A. 181 (“[T]he telephone’s cellular system uses mul-
tiple transmitters/receivers[.]”); J.A. 181–82 (“. . . imple-
ment Raleigh’s remote unit into various types of products
such as telephones or other wireless devices.”). It also sug-
gested, however, that Byrne’s functionality should be incor-
porated into Raleigh’s “remote unit,” though without
specifying what form the remote unit would take. See, e.g.,
J.A. 184 (“[A relevant artisan] would have found it obvious
to modify Raleigh’s remote unit to include Byrne’s cir-
cuitry[.]”).
C
The Board, acting on behalf of the PTO’s Director, in-
stituted the requested IPR in December 2022, J.A. 121, and
issued its final written decision in December 2023, Deci-
sion, at *1. In an aspect of its decision not challenged here,
it held claims 1, 5–9, and 12–14 unpatentable for obvious-
ness. Id., at *5–20, 24–31.
The Board rejected Apple’s challenge to claims 3 and 4
based on Byrne and WO748, giving two reasons. First, it
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APPLE INC. v. SMART MOBILE TECHNOLOGIES LLC 8
found that Apple had failed to establish a motivation to
modify the combination of Byrne and WO748 to include a
VPN. See id., at *20–24. The Board determined that “the
full record [did] not make clear how the asserted benefits
of a VPN would apply to the cordless and cellular commu-
nications of Byrne’s [telephone.]” Id., at *23. Finding “no
indication in the record that a phone like Byrne’s [ ] could
initiate or connect to a virtual network,” the Board con-
cluded that Apple’s evidence of the advantages of VPNs
“pertain[ed] to network communications,” so “would not de-
scribe benefits of a VPN for Byrne’s [telephone].” Id., at
*24. Second, and independently, the Board concluded that
Apple “[did] not address” whether a relevant artisan would
reasonably have expected to succeed in modifying “WO748
to be configured to join a virtual network.” Id.
The Board also ruled that Apple had failed to prove any
of the Raleigh-Byrne grounds of obviousness because Apple
had not shown a reasonable expectation of success in com-
bining those references in a telephone. Id., at *31–39. The
Board determined that the petition’s theory of obviousness
required the combination to be implemented in a telephone
notwithstanding that the petition “[could] be read to add
only Byrne’s cordless circuitry to Raleigh’s remote unit.”
Id., at *38. The Board recounted both Smart Mobile’s evi-
dence of technical challenges to making the combination
and Apple’s counterarguments. Id., at *34–36. Then, the
Board summarized Apple’s position as “conclud[ing],”
“based on the teachings of Raleigh and Byrne,” that a rele-
vant artisan “would have understood that the intended op-
erations [i.e., Raleigh’s and Byrne’s systems] would be
achievable in parallel.” Id., at *37 (citation omitted). But,
the Board found, “[t]he cited portions of Raleigh and Byrne
do not describe adding Raleigh’s signal processing system
to a radio telephone such as Byrne’s[.]” Id. Thus, per-
suaded by Smart Mobile’s evidence that a relevant artisan
would have been deterred by various “implementation
challenges,” the Board found no reasonable expectation of
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APPLE INC. v. SMART MOBILE TECHNOLOGIES LLC 9
success in making the combination. Id., at *37–38 (citation
omitted). Accordingly, it held that Apple had not shown
any challenged claim to be unpatentable on the Raleigh-
Byrne grounds, resulting in claims 2–4 and 15–20 being
upheld. See id., at *38–39.
Apple requested director rehearing, and its request
was denied. It timely appealed following that denial. We
have jurisdiction under 28 U.S.C. § 1295(a)(4)(A) and 35
U.S.C. §§ 141(c), 319.
II
The existence of a motivation to combine references
and the existence of a reasonable expectation of success are
questions of fact. PAR Pharmaceutical, Inc. v. TWI Phar-
maceuticals, Inc., 773 F.3d 1186, 1196–97 (Fed. Cir. 2014)
(citations omitted). We review the Board’s findings of fact
for substantial evidentiary support. Corephotonics, Ltd.
v. Apple Inc., 84 F.4th 990, 1001 (Fed. Cir. 2023). Substan-
tial evidence is “such relevant evidence as a reasonable
mind might accept as adequate to support a conclusion.”
Consolidated Edison Co. of New York v. National Labor Re-
lations Board, 305 U.S. 197, 229 (1938).
The present appeal relates to Apple’s Byrne-WO748 ob-
viousness challenge, which applies to claims 3 and 4 of the
’943 patent, and its Raleigh-Byrne obviousness theories,
which collectively bear on all the upheld claims, i.e., claims
2–4 and 15–20. We first address the Byrne-WO748 ground,
and then the Raleigh-Byrne grounds. We reject Apple’s ar-
guments and affirm the decision of the Board.
A
Apple challenges each of the two bases on which the
Board upheld claims 3 and 4 against Apple’s argument for
obviousness based on the Byrne-WO748 combination.
First, Apple challenges the Board’s finding that a motiva-
tion to combine Byrne and WO748 had not been proved,
asserting that the Board too narrowly focused on whether
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APPLE INC. v. SMART MOBILE TECHNOLOGIES LLC 10
a relevant artisan would have seen advantages to Byrne’s
telephone communicating over the WO748 VPN. Apple
Opening Br. at 31–45. Second, Apple challenges the
Board’s finding that a reasonable expectation of success in
making the combination had not been proved, asserting
that the Board failed to consider arguments and evidence
presented by Apple. Apple Opening Br. at 45–51. We hold
that the Board did not err in finding no motivation to com-
bine, so we do not reach the second ground.
1
The claim language is important to understanding and
evaluating Apple’s principal argument on appeal in sup-
port of its contention that the Board erred in finding no
persuasive proof of the asserted motivation to combine.
Claim 1 recites a “wireless communication device.” De-
pendent claim 3 then adds that “[t]he device of claim 1” is
further in communication with a network switch
box configured with a plurality of ports and config-
ured to connect to a plurality of networks to for-
ward packets between different networks and join
a virtual network.
’943 patent, col. 12, lines 16–20. The Board found that Ap-
ple did not persuasively show a motivation to combine
Byrne and WO748 to arrive at Byrne’s phone itself com-
municating over WO748’s VPN, and one sufficient reason
for that finding was an underlying finding that the record
did not show that Byrne’s phone, with its encryption or
other security measures, would benefit from being used on
a VPN. Decision, at *23–24.
Apple asserts that “challenged claims [3 and 4] do not
require the ‘wireless device’ of claim 1 (Byrne’s phone) to
connect to a virtual network. . . . [I]t is the ‘network switch
box’ in claim 3 that joins the virtual network, not the wire-
less device.” Apple Opening Br. at 37. Relying on that as-
serted claim construction, Apple criticizes the Board’s
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APPLE INC. v. SMART MOBILE TECHNOLOGIES LLC 11
decision, writing: “Because the claims do not require the
‘wireless communication device’ of claim 1 (Byrne’s phone)
to connect to a virtual network, there is no reason to require
the modification to benefit Byrne’s phone.” Apple Reply Br.
at 3–4 (emphasis added and removed). The premise of Ap-
ple’s argument on appeal thus is a position on the proper
construction of claim 3—as not requiring the device to com-
municate over the virtual network—on which Apple rests
its contention that its petition could not properly be under-
stood as asserting a motivation to have Byrne’s phone com-
municate over WO748’s VPN.
But the Board clearly understood Apple’s petition as
arguing for a motivation to combine the references so that
Byrne’s phone would communicate over WO748’s VPN.
The Board took Apple’s position to be “that Byrne’s [cord-
less cellular telephone] and WO748’s remote and base
units are part of a virtual network and that one of ordinary
skill in the art would have been motivated to configure such
components to join a VPN.” Decision, at *21 (emphases
added) (citing J.A. 167 (petition)). Later, when discussing
the merits of the combination, the Board concluded that
Apple had failed to show “that a phone like Byrne’s [ ] could
initiate or connect to a virtual network.” Id., at *24. And
the Board rejected the motivation assertion because Apple
had not shown that a relevant artisan would see a benefit
to having Byrne’s phone, with its encryption or other secu-
rity, communicating on a VPN. Id., at *23–24.
On appeal, Apple’s main argument for disturbing the
Board’s ruling rests on the assertion that the Board was
unreasonable in its understanding of the motivation theory
presented in Apple’s petition. In particular, Apple chal-
lenges the understanding of the petition as asserting a mo-
tivation to make a combination in which Byrne’s phone
communicated over WO748’s VPN. But Apple has not
made a showing that the Board unreasonably understood
the motivation assertion of Apple’s petition.
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APPLE INC. v. SMART MOBILE TECHNOLOGIES LLC 12
For one thing, Apple has not shown, as indirectly indi-
cating that the Board’s reading of Apple’s petition was un-
reasonable, that it is unreasonable to read claim 3 as
requiring the device to communicate over the VPN. To re-
ject the claim-construction premise of any such argument,
we need not definitively decide the proper construction. In-
deed, neither party sought a claim construction on the
point before the Board, see Decision, at *4, and even on ap-
peal Apple does not squarely present a claim-construction
contention, making a claim-construction suggestion only in
passing and without full analysis, see Apple Opening Br. at
37; Apple Reply Br. at 3–4. It suffices to observe that a
reading of claim 3 as contemplating the device’s communi-
cating over the virtual network is a reasonable one on its
merits given the intrinsic evidence.
The claim language can readily be understood to re-
quire the recited “communication” with a network switch
box “configured to . . . join a virtual network” as demanding
that the wireless device be capable of communicating in or
with the virtual network. And the specification provides
support for that reading. The patent’s discussion of virtual
networks asserts that, in one embodiment, a cellular tele-
phone may communicate “through” a network switch box
which has joined a VPN “to [a] server.” ’943 patent, col. 8,
lines 52–59 (describing fig. 13). In the corresponding fig-
ure, the cellular telephone is depicted as part of “VPN
1302” which involves networked communication. See id.,
fig.13; id., col. 8, lines 44–48. In a related embodiment, the
specification discloses that devices like a telephone “in” a
VPN “may operate wireless or wired devices . . . connected
to other wired or wireless networks,” contemplating net-
worked communication by such a telephone. See id., col. 8,
lines 33–39; id., fig. 12. And in the summary of the inven-
tion, the patent is described as relating to “[Internet Proto-
col] based cellular telephones.” Id., col. 1, lines 43–46; see
also id. (Title) (“. . . Internet Protocol [ ] Based Wireless De-
vices . . .”); id. (Abstract) (describing patented method
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APPLE INC. v. SMART MOBILE TECHNOLOGIES LLC 13
involving “multiple Internet Protocol [ ] based wireless
data transmissions . . . between a wireless device and a
server”); id., col. 10, lines 29–33, 41–53 (reciting features of
invention requiring networked communication by a tele-
phone).
More directly focusing on Apple’s petition, we conclude
that Apple has not shown that the Board unreasonably un-
derstood Apple’s petition. We would not disturb the
Board’s reading of Apple’s petition except for an abuse of
discretion. Here, Apple has not developed an argument un-
der that standard. And in any event, the Board had a suf-
ficient basis in Apple’s petition for understanding that
Apple was arguing for satisfaction of claim 3 by Byrne’s
phone joining the VPN.
“The Board is entitled to discretion in how it interprets
petitions.” Netflix, Inc. v. DivX, LLC, 84 F.4th 1371, 1377
(Fed. Cir. 2023). It abuses that discretion when its decision
“(1) is clearly unreasonable, arbitrary, or fanciful; (2) is
based on an erroneous conclusion of law; (3) rests on clearly
erroneous fact finding; or (4) involves a record that con-
tains no evidence on which the Board could rationally base
its decision.” Ericsson Inc. v. Intellectual Ventures I LLC,
901 F.3d 1374, 1379 (Fed. Cir. 2018) (citation omitted). In
this case, we conclude that the Board acted within its dis-
cretion in reading Apple’s Byrne-WO748 theory as involv-
ing Byrne’s telephone itself joining WO748’s VPN to
communicate over it.
That is the most natural understanding of the (terse)
language Apple used in the petition, where it said that
“network devices/interfaces (like Byrne’s telephone . . .) are
part of a virtual network.” J.A. 167 (emphases added); see
J.A. 1152 (first Jensen declaration) (same). Portions of the
expert testimony, too, support the Board’s reading—as Ap-
ple itself says, “Dr. Jensen[ ] provided an illustration and a
corroborating reference [ ] showing how subscriber units
like phones would connect to a VPN.” Apple Opening Br.
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APPLE INC. v. SMART MOBILE TECHNOLOGIES LLC 14
at 44 (citing J.A. 2268–69) (emphasis added). Apple quotes
the petition’s statement that “[the] remote and base units
in WO748 . . . join a VPN,” Apple Opening Br. at 37 (citing
J.A. 167) (emphasis removed), but that statement does not
undermine the Board’s reading of the petition’s theory.
That sentence does not entail something contrary to the pe-
tition’s statements about the relation of Byrne’s telephone
to the VPN—that Byrne’s telephone would be “part of a vir-
tual network.” J.A. 167.
We see no sound basis for declaring that the Board
could not reasonably give Apple’s presentation of its Byrne-
WO748 obviousness theory its most natural interpretation.
In particular, as already noted, this is not a case in which
there is only one reasonable interpretation of the claim at
issue and the Board had to read the petition to align with
that interpretation. Nor did Apple, before the Board,
timely stake out the claim-construction position it now im-
plicitly advances on appeal or otherwise make clear the
view of its Byrne-WO748 obviousness theory it now
presses. On the record here, we see no abuse of discretion
in the Board’s reading of Apple’s petition on this point.
2
Apple also asserts that, even on the understanding that
Apple’s theory contemplated Byrne’s telephone’s joining a
VPN (as a modification to WO748), the Board erred be-
cause its motivation-to-combine analysis was legally erro-
neous. See Apple Opening Br. 38–45. We disagree.
Apple had the burden to demonstrate “that a skilled
artisan would have been motivated to combine the teach-
ings of [Byrne and WO748, modified with a VPN] to achieve
the claimed invention.” Kinetic Concepts, Inc. v. Smith &
Nephew, Inc., 688 F.3d 1342, 1360 (Fed. Cir. 2012) (citation
omitted). Here, as discussed, the Board could properly fo-
cus its inquiry on whether Apple presented persuasive
proof of a motivation to combine (and modify) the refer-
ences to yield Byrne’s telephone capable of joining a VPN.
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APPLE INC. v. SMART MOBILE TECHNOLOGIES LLC 15
The Board cited substantial evidence, noting the Byrne
phone’s encryption and carefully scrutinizing Apple’s evi-
dence, for its finding that Apple did not establish a persua-
sive reason that a VPN “would provide additional
‘communication privacy’ on top of Byrne’s data encryption
for cordless and cellular systems”—or, therefore, that a rel-
evant artisan would be motivated to make the asserted
combination. Decision, at *23. Apple has not shown a lack
of substantial-evidence support for that finding.1
Apple invokes our decision in Intel Corp. v. PACT XPP
Schweiz AG, 61 F.4th 1373 (Fed. Cir. 2023), but that deci-
sion does not show error in the Board’s analysis here. In
that case, we reversed the Board’s determination that no
motivation existed to combine two references, where each
addressed the same problem in a different way and the
combination involved swapping one reference’s mechanism
for the other’s. See PACT, 61 F.4th at 1380–81. We in-
voked the familiar principle that, to demonstrate a motiva-
tion to combine, it is not necessary to show that one
reference “improve[s]” on another reference with respect to
a problem, where the first reference provides, for address-
ing a common problem, a “suitable option to replace” the
relevant feature of the other reference. Id. (internal quo-
tation marks and citation omitted). On the particular facts
in PACT, that principle controlled, because it was clear
that a relevant artisan would view the two existing ap-
proaches to a single problem as sufficiently
1 Besides addressing Apple’s reliance on privacy ben-
efits of VPNs, the Board referred to and rejected Apple’s
reliance on “network scalability” benefits. Decision, at *23.
On appeal, Apple merely adverts to the latter benefits in
passing. Apple Opening Br. at 38, 39, 43. It provides no
meaningful argument for why, as a factual matter, the
Board lacked substantial evidence for its treatment of
scalability. We consider any such contention forfeited.
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APPLE INC. v. SMART MOBILE TECHNOLOGIES LLC 16
interchangeable to motivate replacing one with the other.
See id. That ruling does not undermine the Board’s deter-
mination in the present case that Apple’s asserted VPN se-
curity advantages were insufficient to demonstrate a
motivation to combine. It is not proposed here to swap out
Byrne’s security features for security features of VPNs. In-
deed, the latter, for networked communications, are hardly
a “suitable option to replace” the encryption of Byrne’s tel-
ephone, which is crucial for the cordless and cellular oper-
ations. PACT does not foreclose the possibility that a
proposed addition of features might be, as the Board found
here, insufficiently motivated in light of the primary refer-
ence’s features.2
The Board therefore did not err in finding that Apple
failed to prove a motivation to combine Byrne with WO748
(as modified with a VPN). That conclusion is sufficient to
affirm the Board’s conclusion that claims 3 and 4 were not
2 The dissent focuses on Apple’s second expert decla-
ration (submitted with Apple’s Reply), which states “that a
VPN provides a ‘secure tunnel’ through a ‘public network,’”
Dissent at 3 (quoting J.A. 2268 ¶ 28), and infers that,
therefore, encrypted cellular communications in a VPN
would benefit from network security on a “second wired
[communications] leg taking place over a public network,”
id. But the Board could reasonably find no persuasive ba-
sis for the dissent’s inference. Neither the cited passage
nor Apple’s Reply reference to it asserted that there would
be a marginal benefit from a VPN’s “secure tunnel” to al-
ready-encrypted cellular communications like those of
Byrne’s phone. See J.A. 2268 ¶ 28 (no mention of Byrne’s
cellular communications or encryption); J.A. 462–63 (Ap-
ple’s Reply, citing J.A. 2268 ¶ 28 simply for the proposi-
tions that “implementing a VPN for a network . . . was well-
known” and that VPNs were “obviously applicable” to
WO748’s components).
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APPLE INC. v. SMART MOBILE TECHNOLOGIES LLC 17
shown to be unpatentable based on the Byrne-WO748 com-
bination. We need not and do not address the Board’s find-
ing of no proven reasonable expectation of success in
making the same combination.
B
We turn next to the Board’s finding that a relevant ar-
tisan would not have reasonably expected to succeed in
combining Raleigh and Byrne—a finding the Board relied
on to reject Apple’s Raleigh-Byrne challenges to claims 2–
4 and 15–20. Apple contends that the Board erred in two
ways: first, by limiting its analysis to Raleigh-Byrne com-
binations implemented in a telephone and, second, by ig-
noring Apple’s evidence and holding Apple to an incorrect
legal standard. See Apple Opening Br. at 51–66. We reject
these contentions.
1
According to Apple, the Board abused its discretion in
reading the petition’s references to Raleigh’s “remote unit,”
in the argument for obviousness based on the Raleigh-
Byrne combination, as limited to telephones, thus not ad-
dressing, e.g., a Raleigh-Byrne combination implemented
in a vehicle. Apple Opening Br. at 56–61. We disagree.
The Board acted within its discretion in assessing, and re-
jecting, the only theory of how Raleigh and Byrne could be
combined that was clearly presented in Apple’s petition.
As discussed above, the interpretation of an IPR peti-
tion is a matter of discretion for the Board. See Netflix, 84
F.4th at 1377; Corephotonics, 84 F.4th at 1002. “While the
Board should not take an overly mechanistic view of a pe-
tition and decline to address an argument because the pe-
titioner did not present it with ideal vigor and clarity, the
Board should also not have to decode a petition to locate
additional arguments beyond the ones clearly made.” Net-
flix, 84 F.4th at 1377; see id. at 1377–78 (collecting cases).
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APPLE INC. v. SMART MOBILE TECHNOLOGIES LLC 18
Apple’s petition did not clearly present, so the Board
was not required to address, any combination of Raleigh
and Byrne other than one resulting in a telephone. The
straightforward import of the petition’s description of the
claimed “device” in the combination is that it is a telephone:
The petition introduces the combination as “imple-
ment[ing] Raleigh’s [ ] systems . . . as the cellular system
described by Byrne such that the telephone’s cellular sys-
tem uses multiple transmitters[ ] . . . . while the telephone’s
cordless system remains operative to enable Raleigh-Byrne’s
telephone . . . .” J.A. 181 (emphases added). The same sec-
tion concludes by asserting the existence of “a reasonable
expectation of success in implementing a dual-mode tele-
phone with Raleigh[ and Byrne’s] known communication
design[s].” J.A. 186 (emphasis added).
To be sure, there are several references to Raleigh’s “re-
mote unit” in the relevant portion of the petition. See, e.g.,
J.A. 180 (describing “the telephone or remote unit in the
combination”); J.A. 181 (asserting motivation to “incorpo-
rate the [ ] benefits proffered by Byrne into Raleigh’s re-
mote unit”). Those references are naturally understood as
a general preface to the more specific combination then as-
serted. For example, the petition, after stating that “Ra-
leigh’s remote unit is . . . modifiable to operate[ ] with a
variety of cellular terminals” such that a skilled artisan
would be inclined to “implement Raleigh’s remote unit into
various types of products such as telephones or other wire-
less devices,” J.A. 181–82, specifies that “Raleigh-Byrne’s
remote unit would improve the cellular system of Byrne’s
telephone,” J.A. 183. Significantly, the petition does not
specifically identify any other form the combination it re-
lies on would take. See J.A. 180–86.
Apple’s arguments based on Raleigh and Byrne for the
obviousness of several claims provide further support for
the Board’s reading of the Raleigh-Byrne combinations as
exclusively involving a telephone. Apple said, referring to
claim 1, that a relevant artisan would have understood the
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APPLE INC. v. SMART MOBILE TECHNOLOGIES LLC 19
combination to “apply Raleigh’s techniques utilizing multi-
ple transceivers and antennas as the cellular system of
Byrne’s telephone.” J.A. 192 (emphasis added). Similarly,
as to claim 5, the petition asserted that a skilled artisan
“would have modified Byrne’s cellular system based on Ra-
leigh’s structures and techniques . . . while Byrne’s cordless
system remains operative.” J.A. 199–200 (emphasis added).
Apple’s arguments for the other relevant claims were sim-
ilar. See, e.g., J.A. 205 (for claim 8, referring to “the tele-
phone[ ]” of the combination); J.A. 207 (for claims 3–4,
referring to “Raleigh-Byrne’s telephone”); J.A. 216 (for
claims 13–14, repeatedly mentioning “the telephone” of the
combination).
To the extent that a few of the petition’s references to
Raleigh’s remote unit might suggest implementing the
combination in some unidentified device other than a tele-
phone, any such theory is scattered across isolated sen-
tences or clauses in seven pages. The Board was not
required to engage with that barely articulated argument.
See Netflix, 84 F.4th at 1377. The Board’s recognition of
Apple’s contention that it is possible to read the petition as
Apple suggests, see Decision, at *38, is not equivalent to a
statement that it would be unreasonable to read the peti-
tion otherwise. Just the opposite—the Board’s decision,
discussing Apple’s reading, explains that a non-telephone
combination was not sufficiently presented in the petition
and therefore did not have to be considered. See id. That
conclusion was reasonable.
2
In the alternative, Apple argues that, as to Raleigh and
Byrne combined in a telephone, the Board ignored Apple’s
evidence and required (erroneously) identification of ex-
press teachings in Raleigh or Byrne that would show ex-
pectation of success in making the combination. Apple
Opening Br. at 62–66. Those contentions lack merit.
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APPLE INC. v. SMART MOBILE TECHNOLOGIES LLC 20
The Board did not ignore Apple’s evidence; rather, it
found Apple’s evidence unpersuasive. The Board methodi-
cally recounted each of Apple’s reasons for finding a rea-
sonable expectation of success in making a Raleigh-Byrne
telephone, including the testimony provided by Dr. Jensen.
See Decision, at *35–36 (citing, inter alia, J.A. 2284–97
(second Jensen declaration)). Dr. Jensen, for his part,
largely supported his opinions by citations to the disclo-
sures of Raleigh and Byrne. See J.A. 2284–97; J.A. 1169–
76. The Board observed that Smart Mobile had identified
technical challenges to making a Raleigh-Byrne telephone,
that Apple’s and Dr. Jensen’s “cited portions of Raleigh and
Byrne do not describe adding Raleigh’s signal processing
system to a radio telephone such as Byrne’s” and that Ap-
ple did “not provide any further argument or evidence else-
where in the record to explain why one of ordinary skill in
the art would have had a reasonable expectation of suc-
cess.” Decision, at *37. The Board reasonably concluded
that “the full record [ ] shows insufficient support for [Ap-
ple’s] only reasonable expectation of success argument for
the Raleigh-Byrne combination.” Id., at *38.
Apple’s complaint that the Board “did not address” Dr.
Jensen’s testimony and thus failed to consider “key evi-
dence” is unfounded. Apple Opening Br. at 65. The Board
addressed the thrust of Dr. Jensen’s testimony when it re-
ferred to the portions of Raleigh and Byrne cited exten-
sively by Dr. Jensen and found them unresponsive to
Smart Mobile’s evidence. See Decision, at *37; J.A. 2284–
97. No more was necessary—“the Board is not require[d]
. . . to address every argument raised by a party or explain
every possible reason supporting its conclusion.” Yeda Re-
search v. Mylan Pharmaceuticals, Inc., 906 F.3d 1031, 1046
(Fed. Cir. 2018) (citation omitted). It is enough that the
Board considered the “important aspect[s] of the problem”
and identified the argument that carried the day. See Med-
tronic, Inc. v. Teleflex Innovations S.a.r.l., 70 F.4th 1331,
1343–44 (Fed. Cir. 2023) (quoting Motor Vehicle
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APPLE INC. v. SMART MOBILE TECHNOLOGIES LLC 21
Manufacturers Association of the United States, Inc.
v. State Farm Mutual Automobile Insurance Co., 463 U.S.
29, 43 (1983)). We see no indication that the Board failed
to apprehend or consider Apple’s arguments.
Neither did the Board apply the wrong legal standard
in weighing the evidence. Apple singles out the Board’s
statement that “[t]he cited portions of Raleigh and Byrne
do not describe [the combination]” as betraying an errone-
ous requirement that Apple identify an express teaching in
the references as showing a reasonable expectation of suc-
cess. Apple Opening Br. at 65 (citing Decision, at *37).
Read in context, though, that passage of the decision is
simply an acknowledgement that Apple’s own expectation-
of-success arguments were founded on the disclosures of
Raleigh and Byrne. The decision’s reference to the lack of
proof “elsewhere in the record” confirms that the Board was
not articulating a requirement that Raleigh and Byrne
themselves rebut Smart Mobile’s arguments, but instead
was concluding that none of Apple’s evidence persuasively
did so. See Decision, at *37. Because Apple has failed to
demonstrate error in the Board’s interpretation of the pe-
tition’s Raleigh-Byrne obviousness arguments or in the
Board’s evaluation of Apple’s corresponding evidence for a
reasonable expectation of success, we affirm the Board’s re-
jection of the Raleigh-Byrne grounds of unpatentability.
III
We have considered Apple’s remaining arguments and
find them unpersuasive. For the foregoing reasons, the de-
cision of the Board is affirmed.
AFFIRMED
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N OTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
APPLE INC.,
Appellant
v.
SMART MOBILE TECHNOLOGIES LLC,
Appellee
______________________
2024-1623
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2022-
01004.
______________________
D YK, Circuit Judge, concurring-in-part and dissenting-in-
part.
I join the majority opinion affirming the Board’s con-
clusion that claims 2–4 and claims 15–20 were not obvious
over U.S. Patent No. 6,144,711 to Raleigh et al. in view of
European Patent Application Publication No. 0660626 to
Byrne (“Byrne”). However, Apple also asserts that claims 3
and 4 are unpatentable as obvious over Byrne in view of
International Patent Publication No. WO 98/27748 to Far-
ber et al. (“WO748”). The majority decides that there was
substantial evidence to support the Board’s finding that a
person of ordinary skill in the art (“POSA”) would have
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APPLE INC. v. SMART MOBILE TECHNOLOGIES LLC 2
lacked motivation to combine Byrne with WO748 to join a
virtual network. Contrary to the majority, I think that sub-
stantial evidence does not support the Board’s determina-
tion that there was insufficient motivation to combine
Byrne and WO748.1 I respectfully dissent as to claims
3 and 4.
I
The relevant claim limitation in the Byrne-WO748
combination is “wireless communication device . . . further
in communication with a network switch box . . . config-
ured to . . . join a virtual network.” ’943 patent claims 1, 3.
The Board concluded that there would not have been a mo-
tivation to combine Byrne’s phone with the WO748’s re-
mote unit (network switch box) configured to join a virtual
network. The Board determined that Byrne already de-
scribes data encryption for cordless and cellular systems,
and that Apple failed to establish that a POSA would have
been motivated to add a virtual network for “additional”
security “on top of Byrne’s data encryption for cordless and
cellular systems.” J.A. 53. In the Board’s view, this was so
because Byrne provides data encryption for cordless and
cellular systems, and Apple’s evidence failed to establish
that a virtual network would provide any added security
benefit to that already disclosed by Byrne. In other words,
the Board found that, in Apple’s proposed combination,
Byrne’s encryption provided enough security between the
phone and the WO748 remote unit, and Apple did not show
enough evidence of any need for security between the re-
mote unit and points beyond. In my view, the Board’s de-
cision is not supported by substantial evidence because the
1 I agree with the majority’s conclusion that the
Board reasonably understood Apple’s petition to propose a
Byrne-WO748 combination in which Byrne’s phone itself
would communicate over a virtual network through
WO748. See Majority Op. 12–14.
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APPLE INC. v. SMART MOBILE TECHNOLOGIES LLC 3
undisputed record showed that a POSA would have been
motivated to combine Byrne with WO748 to provide addi-
tional security between the remote unit and the Internet or
the telephone network.
Apple proposed that the Byrne-WO748 combination
could operate through a virtual network or virtual private
network (“VPN”) for “known benefits.” J.A 167. Together
with the petition, Apple’s expert, Dr. Jensen, testified that
such known benefits included “stopping [a] third party’s ac-
cess to the network.” J.A. 1152. Apple submitted a second
declaration from Dr. Jensen with its IPR Reply, in which
Dr. Jensen pointed to references that disclosed that
WO748’s remote units would connect to network services
via a public network, J.A. 2269 (annotating WO748’s Fig-
ure 1), and that a VPN provides a “secure tunnel” through
a “public network,” J.A. 2268 ¶ 28 (citing J.A. 2907 col. 5
ll. 21–23) (emphasis added). He also testified to “strong de-
mand” for using VPNs for benefits including “communica-
tions privacy,” J.A. 2269–70 ¶ 29 (citing J.A. 2981;
J.A. 3088 col. 1 ll. 48–54). There was no contrary testi-
mony.
In other words, in a combination of Byrne with WO748,
there are at least two communication legs: a first wireless
leg between Byrne’s phone and the WO748 remote unit,
and a second wired leg taking place over a public network.
Even if Byrne provided adequate encryption to protect com-
munications between Byrne’s phone and the WO748 re-
mote unit, Apple’s evidence pointed to a motivation to
modify the WO748 remote unit to protect the communica-
tions leg that would take place over a public network be-
tween the remote unit and an external network service
provider—that is, to provide a “secure tunnel” through a
“public network.” Smart Mobile made no suggestion that
Byrne’s encryption would provide security through a public
network.
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APPLE INC. v. SMART MOBILE TECHNOLOGIES LLC 4
The Board correctly observed that Byrne already
teaches encryption for wireless communications, providing
a measure of privacy. But this underscores, not under-
mines, Apple’s argument that a POSA would have been mo-
tivated to protect the privacy of communications. The
Board faults Apple for not demonstrating that “Byrne’s
cordless and cellular communications are susceptible to
tracking activities by a third-party application or website.”
J.A. 52. But this misses the point. The Board does not ex-
plain why a POSA would only be interested in deterring
wireless eavesdropping but not wired eavesdropping. Ac-
cording to Apple’s uncontroverted evidence, configuring the
Byrne-WO748 combination to join a virtual network would
have protected the privacy of the wired public-network leg
by providing a “secure tunnel” through the “public net-
work.”
II
While the majority does not reach the question, I think
the Board erred in concluding Apple did not establish rea-
sonable expectation of success. As it is here, reasonable
expectation of success is frequently “intertwined” with mo-
tivation to combine. Elekta Ltd. v. ZAP Surgical Sys., Inc.,
81 F.4th 1368, 1376 (Fed. Cir. 2023). Apple presented un-
controverted evidence that combining Byrne with WO748
would be “routine and predictable,” J.A. 2271–72 ¶ 33, and
that “implementing a VPN for the networks like those de-
scribed in Byrne-WO748 was well-known,” J.A. 2268 ¶ 28.
This was enough to establish a reasonable expectation of
success.
III
Because I see no substantial evidence to support the
Board’s findings that a POSA would have lacked motiva-
tion to combine and reasonable expectation of success in
combining Byrne with WO748 to join a virtual network to
create a “secure tunnel” through a “public network,” I
would vacate the Board’s findings that claims 3 and 4 were
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APPLE INC. v. SMART MOBILE TECHNOLOGIES LLC 5
not unpatentable as obvious and remand. I respectfully
dissent as to claims 3 and 4.
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