NOTE: This disposition is nonprecedential.

 

United States Court of Appeals 

for the Federal Circuit ______________________ 

APPLE INC.,

Appellant

v.

MPH TECHNOLOGIES OY,

Appellee

______________________ 

2021-1387

______________________ 

Appeal from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in No. IPR2019-

00821.

______________________ 

Decided: January 25, 2022

______________________ 

SETH W. LLOYD, Morrison & Foerster LLP, Washington, DC, argued for appellant. Also represented by BRIAN 

ROBERT MATSUI, JOSEPH R. PALMORE, MICHAEL QIAN; 

RICHARD HUNG, San Francisco, CA; BITA RAHEBI, Los Angeles, CA. 

 BRIAN ERIK HAAN, Lee Sheikh Megley & Haan LLC, 

Chicago, IL, argued for appellee. Also represented by 

ASHLEY E. LAVALLEY, CHRISTOPHER LEE, RICHARD BURNS 

Case: 21-1387 Document: 31 Page: 1 Filed: 01/25/2022
2 APPLE INC. v. MPH TECHNOLOGIES OY

MEGLEY, JR.; JAMES CARMICHAEL, STEPHEN TERRY 

SCHREINER, Carmichael IP, PLLC, Tysons Corner, VA. 

 ______________________ 

Before LOURIE, HUGHES, and CUNNINGHAM, Circuit 

Judges.

LOURIE, Circuit Judge. 

Apple Inc. (“Apple”) appeals from the final written decision of the Patent Trial and Appeal Board (the “Board”) 

holding that Apple failed to demonstrate that claims 1–16 

of U.S. Patent 8,037,302 (the “’302 patent”) were unpatentable. See Apple Inc. v. MPH Technologies Oy, No. IPR2019-

00821, 2020 WL 5900607 (P.T.A.B. Oct. 5, 2020) (“Decision”). For the reasons provided below, we affirm. 

BACKGROUND

MPH Technologies Oy (“MPH”) owns the ’302 patent, 

which relates to providing secure connections in telecommunication networks. The specification explains that IP 

security protocols (“IPSec”) provide the capability to secure 

connections through encryption and authentication. ’302 

patent, col. 1 ll. 38–49. A security association is a relationship between a sender and receiver that offers security services to the traffic carried on it. Id. at col. 1 ll. 62–67. The 

specification states that IPSec was designed for use with 

hosts that are relatively static. Id. at col. 2 ll. 19–49. IP 

routing for telecommunication is based on fixed IP addresses, so IPSec may not work well with mobile devices. 

Id. If a mobile host moves from one network to another, a 

time-consuming IPSec connection set up is required. Id. 

The patent discloses avoiding the need to set up an IPSec 

connection when a mobile terminal changes networks by 

relying on a security association that is already established. See, id., at col. 10 ll. 39–43; col. 10 ll. 51–56. 

Claim 1, the sole independent claim, reads as follows: 

Case: 21-1387 Document: 31 Page: 2 Filed: 01/25/2022
APPLE INC. v. MPH TECHNOLOGIES OY 3

1. A method for ensuring secure forwarding of a 

message in a telecommunication network, comprising: 

providing a first terminal from which the message 

is sent and a second terminal to which the message 

is sent,

a) establishing a first secure connection as 

being an active connection and extending 

between a first network address of the first 

terminal and an original network address 

of the second terminal, establishing a second secure connection extending between a 

second network address of the first terminal and the original network address of the 

second terminal, 

b) the first terminal changing from the first 

network address to the second network address, 

the first terminal checking whether the 

second secure connection already exists, 

and

c) when the second secure connection already exists, the second terminal registering the already established second secure 

connection as being the active connection 

without having to reestablish the second 

secure connection.

’302 patent, col. 12 ll. 15–34 (emphasis added). 

Apple filed a petition for inter partes review of 

claims 1–16 of the ’302 patent. Apple argued that 

claims 1–13 and 16 would have been obvious over Int’l Patent Pub. WO 01/54379 A1 (“Ahonen”) in view of U.S. Patent 6,904,466 (“Ishiyama”). J.A. 38, 44. Apple also argued 

that claims 14 and 15 would have been obvious over 

Case: 21-1387 Document: 31 Page: 3 Filed: 01/25/2022
4 APPLE INC. v. MPH TECHNOLOGIES OY

Ahonen and Ishiyama in view of a conference proceeding 

publication titled “Complete Computing” (“Gupta”).1 Id. at 

45. 

The parties initially identified the term “establishing a 

. . . secure connection” for construction. Decision, 2020 WL 

5900607, at *4 (the “establishing limitation”). MPH suggested that the establishing limitation should be construed 

to require forming or creating a new secure connection, and 

Apple agreed. Id.; J.A. 320. Specifically, Apple stated that 

the parties agreed on the claim construction for the establishing limitation but disputed its application to the prior 

art references. J.A. 319–20.

Although Apple agreed to MPH’s proposal, MPH noted 

the possibility that construction of the establishing limitation was still in dispute. Specifically, MPH argued that establishing a security association does not include 

modifying or activating a security association. J.A. 352–

61. During the hearing on July 17, 2020, the Board asked 

Apple to explain its position regarding construction of the 

establishing limitation. Apple’s counsel reaffirmed its belief that the plain and ordinary meaning, “forming or creating a new secure connection,” should apply. J.A. 416–17. 

The Board thus construed “establishing a . . . secure connection” as meaning “forming or creating a new secure connection.” Decision, 2020 WL 5900607, at *4.

The Board’s determination regarding obviousness 

hinged on whether Ahonen taught the establishing limitation. Id. at *6, *9. During its analysis, the Board stated 

that the establishing limitation has two requirements: 

“that the secure connection is established (i) as ‘extending 

between a first network address of the first terminal and 

1 Vipul Gupta, et al., Complete Computing, 

WWCA ’98 Proc. 2D Int’l Conf. on Worldwide Computing 

and Its Applications (Mar. 4–5, 1998).

Case: 21-1387 Document: 31 Page: 4 Filed: 01/25/2022
APPLE INC. v. MPH TECHNOLOGIES OY 5

an original network address of the second terminal’ and 

(ii) ‘as being an active connection.’” Id. at *6. “[T]he first 

requirement is met by ‘forming or creating a new secure 

connection’ between the claimed addresses.” Id. For the 

second requirement, the Board analyzed the ’302 patent 

and determined that “the claim language requires that 

when the first secure connection is established, it is registered as being an active connection.” Id. The Board concluded that “a secure connection [is] established as an 

active connection (i.e., being available for immediate use 

when the secure connection is formed) [but] does not require immediate use.” Id. at *7.

The Board agreed with MPH that Ahonen fails to teach 

the establishing limitation. The Board determined that 

“Ahonen fails to teach that the first secure connection is 

registered as being an active connection when the first secure connection is formed.” Id. at *8. The Board explained 

that Ahonen teaches creating a security association during

a preparations stage and that a remote mobile user may 

remotely activate the preexisting connection during a remote control stage. Id. Thus, when the Ahonen secure connection is formed, it is not active.

In making this determination, the Board relied in part

on Ahonen’s teachings about remote control flag operation. 

Ahonen explains that information about each of the security associations can include a remote control flag indicating whether the security association has been activated by 

a mobile host from outside the intranet. Id. at *9 (citing 

’302 patent, col. 15 ll. 15–16; col. 15 l. 31–col. 16 l. 2). A remote control flag is initially set to “Off” during the preparations stage and is changed to “On” when remotely 

activated by a mobile user. Id. An “Off” flag means that 

the security association has not been activated by the remote control function. Id. The flag is set to “On” after the 

firewall receives a valid control authorization certificate 

from the mobile host. Id. (citing ’302 patent, col. 17 ll. 1–

32).

Case: 21-1387 Document: 31 Page: 5 Filed: 01/25/2022
6 APPLE INC. v. MPH TECHNOLOGIES OY

The Board credited MPH’s expert’s opinion, which 

stated that a person of skill in the art would understand 

the establishing limitation “to mean that the first secure 

connection is established as an active connection for immediate use, as opposed to an inactive connection reserved for 

later use.” Id. at *6. MPH’s expert stated that “the term 

not only requires creating or forming a new secure connection, but also creating or forming a new secure connection 

as being an active connection.” Id. The Board found MPH’s 

expert’s opinion “consistent with the plain and ordinary 

meaning of the limitation’s claim language and the ’302 patent’s [s]pecification.” Id. at *7. In contrast, the Board 

gave Apple’s expert’s opinion little weight, finding that testimony “contrary to the plain claim language and the 

[s]pecification’s teachings,” “contrary to Ahonen’s teachings,” and “without sufficient factual corroboration.” Id.

at *8, *9.

The Board concluded that Apple failed to show by a preponderance of the evidence that claims 1–16 of the ’302 patent are unpatentable. Id. at *9. Apple appealed. We have 

jurisdiction under 28 U.S.C. § 1295(a)(4)(A).

DISCUSSION

We review the Board’s legal determinations de novo, In 

re Elsner, 381 F.3d 1125, 1127 (Fed. Cir. 2004), but we review the Board’s factual findings underlying those determinations for substantial evidence, In re Gartside, 203 F.3d 

1305, 1316 (Fed. Cir. 2000). A finding is supported by substantial evidence if a reasonable mind might accept the evidence as adequate to support the finding. Consol. Edison 

Co. v. NLRB, 305 U.S. 197, 229 (1938).

Apple raises two challenges on appeal. First, Apple 

contends that the Board erred in construing the establishing limitation. Second, Apple argues that the Board’s determination that Ahonen fails to disclose the establishing 

limitation is unsupported by substantial evidence. 

Case: 21-1387 Document: 31 Page: 6 Filed: 01/25/2022
APPLE INC. v. MPH TECHNOLOGIES OY 7

I 

We first consider Apple’s claim construction challenge. 

Claim construction is a matter of law that we review de 

novo. See Poly-America, L.P. v. API Indus., Inc., 839 F.3d 

1131, 1135–36 (Fed. Cir. 2016).

Apple argues that the Board erred in construing the establishing limitation. Apple contends that the Board improperly narrowed the establishing limitation by including 

a timing restriction and by excluding embodiments where 

a new connection is created by modifying an existing connection. Apple argues that the claims do not restrict when 

or how a secure connection becomes active. Apple contends 

that activating a secure connection can take place separately in time from when a connection is first formed and 

that an existing connection can be modified to establish a 

connection as active.

MPH responds that Apple failed to raise its claim construction arguments before the Board. MPH contends that 

Apple informed the Board that the only dispute before it 

was the application of the agreed-upon construction to the 

prior art. MPH thus argues that Apple’s failure to raise its 

claim construction arguments before the Board compels a 

finding of forfeiture. See In re Google Tech. Holdings LLC, 

980 F.3d 858, 862–63 (Fed. Cir. 2020) (interpreting the 

U.S.P.T.O.’s waiver argument as a forfeiture argument). 

Additionally, MPH argues that the Board did not impose 

unnecessary restrictions into the establishing limitation. 

MPH contends that the Board properly adopted the parties’ 

agreed-upon construction of the establishing limitation,

analyzed and applied the plain and ordinary meaning of 

the limitation, and found that Ahonen’s remote activation 

of a preexisting and inactive security association does not 

meet the establishing limitation of claim 1. 

We agree with MPH that, contrary to Apple’s position 

on appeal, Apple only disputed the application of the 

agreed construction to the prior art. In its reply brief to 

Case: 21-1387 Document: 31 Page: 7 Filed: 01/25/2022
8 APPLE INC. v. MPH TECHNOLOGIES OY

MPH’s response, Apple stated that construction of the establishing limitation was not at issue–only the factual application of the construction to Ahonen’s teachings. In 

response to questioning at the hearing concerning whether 

claim construction was in dispute, Apple maintained that 

the parties agreed on the construction of the establishing 

limitation and argued only about the application of the construction to Ahonen. Furthermore, Apple does not argue 

that the Board engaged in sua sponte construction or that 

there are exceptional circumstances that justify departing 

from the forfeiture principle. 

It is clear from the record that Apple chose not to characterize its dispute concerning the establishing limitation 

as a claim construction issue before the Board. Apple attempts here, in contrast, to recharacterize that same dispute as a construction issue deserving of de novo review. 

MPH’s expert’s declaration put Apple on notice that MPH 

was taking the position that a person of skill would understand the establishing limitation “to mean that the first secure connection is established as an active connection for 

immediate use, as opposed to an inactive connection reserved for later use.” See Decision, 2020 WL 5900607, 

at *6–7; J.A. 2028. With the knowledge of MPH’s position, 

Apple continued to maintain that there was no further dispute concerning construction of the establishing limitation. 

After the Board agreed with MPH and MPH’s expert, however, Apple changed its strategy and characterized the issue as a claim construction dispute. We do not encourage 

“suggesting or permitting, for strategic reasons, that [the 

Board] pursue a certain course, and later—if the outcome 

is unfavorable—claiming that the course followed was reversible error.” Google, 980 F.3d at 864 (internal quotation 

marks omitted). 

We conclude that Apple forfeited its arguments as to 

the construction of the establishing limitation because Apple failed to raise these legal arguments before the Board. 

In the absence of exceptional circumstances, we decline to 

Case: 21-1387 Document: 31 Page: 8 Filed: 01/25/2022
APPLE INC. v. MPH TECHNOLOGIES OY 9

address the merits of Apple’s proposed constructions. See 

id. at 862–63. 

II

We next consider Apple’s assertion that the Board’s determination was unsupported by substantial evidence. Apple first argues that, under its proposed construction of the 

establishing limitation, the Board’s finding that Ahonen 

fails to disclose the establishing limitation is unsupported 

by substantial evidence. But since we do not consider Apple’s new claim construction arguments on appeal, we need 

not consider the merits of arguments that depend on the 

adoption of those constructions.

Apple also contends that the Board erred by using a 

truncated obviousness analysis. Apple argues that the 

Board merely identified a timing difference between Ahonen and the claims and ended its analysis without considering whether that difference was a predictable variation. 

Apple argues that the claims were a trivial variation of the 

prior art, the result of a routine design choice, and a choice 

between two well-known options. Apple states that “a patent can be obvious in light of a single prior art reference if 

it would have been obvious to modify that reference to arrive at the patented invention.” Appellant’s Br. at 38 (citing Monsanto Tech. LLC v. E.I. DuPont de Nemours & Co., 

878 F.3d 1336, 1346 (Fed. Cir. 2018)). MPH counters that 

Apple failed to raise these obviousness theories before the 

Board. 

We agree with MPH. First, Apple’s underdeveloped argument that the Board erred by conducting a truncated 

analysis is not persuasive. Apple fails to identify any particular error made by the Board in considering the differences between the claims and the prior art. The Board 

determined that the claim language “tethers the timing of 

registering the connection as an active connection to when 

the secure connection is formed,” Decision, 2020 WL 

5900607, at *7, and that “Ahonen fails to teach that the 

Case: 21-1387 Document: 31 Page: 9 Filed: 01/25/2022
10 APPLE INC. v. MPH TECHNOLOGIES OY

first secure connection is registered as being an active connection when the first secure connection is formed,” id. at 

*8. Although Apple argues that the Board did not sufficiently consider differences between the claims and the 

prior art, Apple’s generalized accusations are not enough 

to identify reversible error. Apple’s disagreement with the 

Board’s interpretation of Ahonen does not amount to a 

demonstration that the Board failed to conduct a proper 

obviousness analysis.

Second, Apple argues for the first time that it would 

have been trivial to modify Ahonen to incorporate the 

claimed activation timing. Before the Board, Apple argued 

that Ahonen “explicitly teaches” the establishing limitation. See id. In its petition, Apple stated that “[t]he ’302 

patent presents a trivial solution to [a] problem that was 

already well-known,” but argued that “Ahonen . . . explicitly disclosed this approach.” J.A. 42–43 (emphasis 

added). Apple did not present a single reference obviousness ground to the Board; thus, Apple’s arguments are untimely. Again, we decline to consider obviousness theories 

that are raised for the first time on appeal.

CONCLUSION

We have considered Apple’s remaining arguments, but 

we find them unpersuasive. Accordingly, we affirm the 

Board’s final written decision upholding the patentability 

of the claims of the challenged patent.

AFFIRMED

Case: 21-1387 Document: 31 Page: 10 Filed: 01/25/2022