Count On It, Plural Term Means More Than One
The US Court of Appeals for the Federal Circuit affirmed Patent Trial & Appeal Board (Board) patentability decisions after determining that the Board did not err in construing multiple terms within the challenged patents. Apple Inc. v. MPH Technologies Oy, Case Nos. 21-1532; -1533; -1534 (Fed. Cir. Mar. 9, 2022) (Moore, C.J.; Prost, Taranto, JJ.)
MPH owns three patents related to a method for forwarding a message from a first computer to a second computer via an intermediate computer via a network and provides secure message forwarding without relying on any extra encapsulation overhead. Apple petitioned for inter partes review (IPR) of MPH’s patents, challenging the claims in the three patents as obvious over a combination of non-patent literature (RFC3104) and a US patent (Grabelsky). During the proceedings, a series of claim construction disputes were raised. The Board issued final written decisions, finding that Apple failed to show that some claims would have been obvious over the combination of RFC3104 and Grabelsky. Apple appealed.
In seeking to overturn the Board’s decision, Apple raised four claim construction disputes. First, Apple argued that the Board erred in finding that the claim limitation “information fields” requires “two or more fields.” Apple argued that “a plural term covers one or more items” and thus the claim limitation was taught by Grabelsky, which uses a single field. Apple further argued that a word such as “plurality” must be used to clarify that the limitation requires more than one item. The Federal Circuit rejected Apple’s argument, explaining that common English usage presumes that a plural term refers to two or more items. The Court found that the Board did not err in construing the claim limitation because the term “information fields” is plural, thus requiring more than one field, and nothing in the claim language or written description suggested otherwise.
Second, Apple argued that the Board’s interpretation that the message was sent from the mobile computer directly to the first address was inconsistent with the claim limitation “intermediate computer configured to receive from a mobile computer a secure message sent to the first network address” in one of MPH’s patents. Apple argued that the passive language of the claim limitation suggested that “the mobile computer need not send the message to the first network address so long as the message is sent there eventually,” and thus the claim limitation was taught by RFC3104, in which a message sent to a first network address is received at another address before being forwarded to the first network address. The Federal Circuit rejected Apple’s arguments, finding that the Board did not err in construing the claim limitation because the plain language established direct sending of the message from the mobile computer to the first address, and nothing in the remainder of the claims or written description suggested otherwise.
Third, Apple argued that the Board erred in construing the term “substitute” in the claim limitation “substitute the unique identity read from the secure message with another unique identity prior to forwarding the encrypted data payload” as requiring “changing or modifying, not merely adding.” Apple relied on RFC3104, which teaches “adding a new outer IP header to an encapsulated data packet,” and argued that because “adding” is equivalent to “substitut[ing],” RFC3104 taught the claim limitation. The Federal Circuit rejected Apple’s arguments, finding that the written description disparaged the prior art solution of tunneling (e.g., extra encapsulation overhead) and thus the Board did not err in concluding that “adding a new header does not satisfy the substitution required by the claims.”
Fourth, Apple argued that RFC3104, which includes creating a new table entry address field, taught the claim limitation “modify the translation table entry address fields,” because the claim limitation was merely functional and covered any embodiments that resulted in a table with different address fields, including new address fields. The Federal Circuit rejected Apple’s arguments and affirmed the Board’s finding that “modifying” requires having existing address fields in the table to modify, and that the modification occurs “when the mobile computer changes its address such that the intermediate computer can know that the address of the mobile computer is changed,” suggesting the existence of an address field prior to modification.
Having rejected each of Apple’s claim construction arguments, the Federal Circuit affirmed the Board’s decisions that the challenged claims of MPH’s patents would not have been obvious over the combination of RFC3104 and Grabelsky.