IP Law Daily, PATENT—Fed. Cir.: PTAB’s partial obviousness ruling on wireless networking patent affirmed; Apple’s other challenges fail, (Feb 27, 2026)

By Saurabh Kashyap, B.A., M.A., LL.B., LL.M.

The Board’s findings on lack of motivation to combine and no reasonable expectation of success were supported by substantial evidence.

In a non-precedential disposition, the U.S. Court of Appeals for the Federal Circuit affirmed the Patent Trial and Appeal Board’s (PTAB) determination that Apple failed to prove multiple claims of a wireless communication technology patent invalid for obviousness. The appellate court held that substantial evidence supported the Board’s findings that Apple did not establish a sufficient motivation to combine one prior art patent application directed to a dual-mode cordless and cellular telephone system with another prior art international publication describing wireless infrastructure capable of supporting multiple signal types to satisfy a “virtual network” limitation. The court further held that Apple failed to demonstrate a reasonable expectation of success in combining a separate prior art patent directed to multi-antenna spatio-temporal signal processing techniques with the dual-mode telephone reference in a telephone implementation (Apple Inc. v. Smart Mobile Technologies LLC, No. 24-1623 (Fed. Cir. Feb. 27, 2026)).

Background. Apple Inc., the appellant, is a global technology company that designs and manufactures smartphones and related communication devices. Smart Mobile Technologies LLC, the appellee, owns the asserted patent.

The patent at issue, U.S. Patent No. 9,614,943 (the ’943 patent), is titled “System to Interface Internet Protocol (IP) Based Wireless Devices With Subtasks and Channels.” The patent claims priority to applications dating back to 1996 and generally relates to wireless communication devices capable of handling multiple Internet Protocol-based data transmissions using multiple antennas. Certain dependent claims, including claim 3, require the wireless device to be “in communication with a network switch box” configured to connect to multiple networks and “join a virtual network.”

The asserted obviousness grounds relied on three principal prior art references. Byrne, European Patent Application No. 0660626 A2, disclosed a dual-mode radio telephone capable of operating in both cordless and cellular modes with built-in encryption features. Raleigh, U.S. Patent No. 6,144,711, described multi-antenna, spatio-temporal signal processing techniques designed to improve wireless communication performance in systems using multiple transmitters and receivers. WO 98/27748 (WO748), International Publication No. WO 98/27748 disclosed a wireless communication infrastructure employing base and remote units to distribute and manage multiple signal types within buildings.

In May 2022, Apple filed an IPR petition, asserting nine overlapping grounds of obviousness based on combinations of six prior art references. The Board instituted review and ultimately held claims 1, 5–9, and 12–14 unpatentable for obviousness. However, it upheld claims 2–4 and 15–20. As relevant on appeal, Apple challenged the Board’s rejection of two theories: first, that claims 3 and 4 were obvious over Byrne in view of WO748; and second, that claims 2–4 and 15–20 were obvious over Raleigh in view of Byrne. Apple appealed the Board’s final written decision after the Director denied rehearing.

Motivation to combine. The Federal Circuit first addressed Apple’s contention that the Board erred in finding no motivation to combine Byrne with WO748, which described wireless communication infrastructure involving remote units and base units.

Apple’s theory required modifying the Byrne-WO748 combination to include a virtual private network (VPN) to meet claim 3’s requirement that the device communicate with a network switch box configured to “join a virtual network.” The Board found that Apple had not demonstrated that a skilled artisan would have been motivated to add a VPN, particularly given Byrne’s existing encryption features for cordless and cellular communications.

The Federal Circuit held that the Board reasonably interpreted Apple’s petition as proposing that Byrne’s telephone itself would communicate over the VPN. Apple argued on appeal that claim 3 did not require the wireless device to join the virtual network—only the network switch box. The court declined to disturb the Board’s understanding of the petition, noting that the Board has discretion in interpreting IPR petitions. Citing Netflix, Inc. v. DivX, LLC, 84 F.4th 1371, 1377 (Fed. Cir. 2023), the court explained that reversal would require a showing of abuse of discretion, which Apple failed to make.

The court further observed that claim 3 could reasonably be read, in light of the specification, to contemplate communication by the wireless device over the virtual network. Because Apple’s petition most naturally asserted that Byrne’s phone would join the VPN, the Board did not err in evaluating motivation on that basis.

Turning to the merits, the court upheld the Board’s finding that Apple failed to show a persuasive reason why a skilled artisan would add VPN functionality to Byrne’s encrypted telephone. Further, the court held that substantial evidence supported the Board’s determination that Apple had not shown additional privacy or scalability benefits sufficient to motivate the modification.

Apple relied on Intel Corp. v. PACT XPP Schweiz AG, 61 F.4th 1373 (Fed. Cir. 2023), arguing that a reference need not improve upon another to supply motivation. The Federal Circuit distinguished PACT, explaining that in that case, the references addressed the same problem and were interchangeable solutions. Here, Apple did not show that VPN security would serve as a suitable substitute or necessary addition to Byrne’s existing encryption. The Board, therefore, did not err in finding no motivation to combine.

Because the absence of motivation was sufficient to sustain the Board’s ruling, the court did not reach the Board’s independent finding of no reasonable expectation of success on the Byrne-WO748 ground.

Reasonable expectation of success. The court next considered Apple’s challenge to the Board’s rejection of obviousness based on Raleigh in view of Byrne.

The Board concluded that Apple’s petition clearly proposed implementing the combination in a telephone. Apple argued on appeal that the Board improperly limited the combination to telephones and should have considered other implementations, such as vehicles. The Federal Circuit disagreed, holding that the petition consistently described the combination as yielding a “telephone” and did not clearly articulate alternative embodiments. Citing Netflix, the court reiterated that the Board need not “decode” a petition to identify undeveloped arguments.

On the issue of reasonable expectation of success, the court rejected Apple’s assertion that the Board ignored key expert testimony. The Board had summarized Apple’s evidence, including expert declarations, but found it unpersuasive in light of Smart Mobile’s evidence identifying technical challenges. The Federal Circuit emphasized that the Board is not required to address every argument in detail, citing Yeda Research v. Mylan Pharmaceuticals, Inc., 906 F.3d 1031, 1046 (Fed. Cir. 2018), and that its factual findings are upheld if supported by substantial evidence, defined in Consolidated Edison Co. v. NLRB, 305 U.S. 197, 229 (1938).

The court held that the Board did not impose an improper requirement of express teachings in the references. Rather, it reasonably concluded that Apple’s evidence, largely derived from the references themselves, did not sufficiently rebut identified technical obstacles.

Dissent. Circuit Judge Timothy B. Dyk concurred in part and dissented in part. He agreed with the affirmance of the Raleigh-Byrne rulings but would have vacated the Board’s decision as to claims 3 and 4. In his view, Apple’s evidence established a motivation to add VPN functionality to protect communications over a public network segment beyond the encrypted wireless leg. He concluded that the Board lacked substantial evidence to find no motivation and no reasonable expectation of success for the Byrne-WO748 combination.

The Case is No. 24-1623.

Judge: Taranto, R.

Attorneys: Debra Janece McComas (Haynes and Boone, LLP) for Apple Inc. Philip Graves (Graves & Shaw LLP) for Smart Mobile Technologies LLC.

Companies: Apple Inc.; Smart Mobile Technologies LLC

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