IP Law Daily, PATENT—Fed. Cir.: PTAB’s obviousness determination reversed due to failure to consider reply arguments, (Jan 13, 2026)

By Kevin M. Finson, J.D.

The PTAB erred in declining to consider arguments raised in a reply brief because the arguments were properly responsive to a proposed claim construction raised for the first time in the opposition brief.

Apple Inc. showed the Patent Trial and Appeal Board erred by refusing to consider its reply arguments about obviousness, the U.S. Court of Appeals for the Federal Circuit has held. The arguments made on reply properly responded to a construction proposed for the first time in the patent owner’s opposition (Apple Inc. v. Smart Mobile Technologies, LLC, No. 2024-1419, (Fed. Cir. Jan. 13, 2026)).

Smart Mobile Technologies, LLC (Smart Mobile) was the owner of U.S. Patent No. 9,191,083 (the s’083 patent), which related to wireless data transmission. Apple, Inc. (Apple) petitioned for inter partes review, challenging claims 1-9 and 12-20 on the ground of obviousness. The Patent Trial and Appeal Board (PTAB) instituted review and found that Apple had failed to show the challenged claims unpatentable by a preponderance of the evidence. Apple appealed, challenging the Board’s claim construction as well as its refusal to address Apple’s alternative arguments made in its reply brief.

Claim construction. The Board had determined the claims required a set of antennas in which at least some antennas were for both transmitting and receiving. Apple argued that two separate sets of antennas, one for transmitting and a separate, non-overlapping set for receiving, should fall within the scope of the challenged claims.

The Federal Circuit determined that the plain language of the claims, when read in the context of the specification, supported the Board’s interpretation. The specification repeatedly and consistently described use of the same antennas for both transmitting and receiving. The Board did not err in claim construction.

Consideration of reply. Apple argued that even if the Board’s claim construction was correct, the Board erred by declining to address its alternative arguments presented in its reply, concerning obviousness under that construction based on Apple’s prior art reference. The Board had found that Apple’s arguments were not grounded in its petition and so were improperly raised for the first time in its reply.

The Federal Circuit found that because Smart Mobile’s argument on claim construction, which was eventually adopted by the Board, had not been presented until its patent owner response and after institution of review, Apple should have been allowed to respond to those arguments on reply.

The Federal Circuit vacated the decision of the Board and remanded for consideration of Apple’s reply arguments.

The Case is No. 24-1419.

Judge: Stoll, K.

Attorneys: Nitika Gupta Fiorella (Fish & Richardson PC) for Apple Inc. Philip Graves (Graves & Shaw LLP) for Smart Mobile Technologies LLC.

Companies: Apple Inc.; Smart Mobile Technologies LLC

Cases: Patent FedCirNews USPTO