Apple Inc. v. MPH Technologies Oy

(Fed. Cir.) Argued for inter partes review petitioner in challenge to computer security claims.

Transcript

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Speaker 1 (00:00):

The next case is also Apple versus MPH Technologies, 2021, 1387. Mr. Lloyd is arguing this one. We're ready when you are.

Seth Lloyd (00:16):

May it please the court, Seth Lloyd for Apple. Either of two clear claim construction errors requires reversal. First, the board wrongly read the claims to require particular timing. Second, it wrongly read the claims to require creating new connections from scratch. Starting with the first, the disputed language here reads, establishing a first secure connection as being an active connection and extending between two given addresses. That plain language simply requires giving a connection to those properties. In the boards own words, “a connection is established one as extending between two addresses, and two as being an active connection.” Anytime a connection is given those properties, the requirement is met. Nothing in the claims mentions timing at all, and the specification is equally clear. The patent describes the quote “method of the invention” without even mentioning first connection activation, let alone suggesting it requires any special timing.

Seth Lloyd (01:20):

And that’s because everybody agrees that the purported advance here is all about the second connection and switching to a second connection and activating that second connection. Thus, when the patent actually describes connection activation, it expressly states that the timing is flexible. It says, “when a connection is formed, it is registered for immediate and/or later use.” But the boards construction completely excludes that and/or later embodiment that’s disclosed in the patent. What’s more, the boards construction is unworkable, right? The board was forced to admit at Appendix 18 that it’s impossible to create a new connection from scratch and activate it simultaneously. It understood that there will always be some delay between those two things, and that’s clear from the patent, right? So, the patent, when it talks about creating a new connection from scratch, the way it describes doing that is in this time intensive process where you have to create and share cryptographic keys between two ends of a connection. And then only later in a separate step does the patent talk about registering that previously created connection as active. And so, under the boards and MPH’s view, the claim somehow permits some time delay between creating a new connection and activating it, but not too much. But nobody can say how much is too much and, and the reason nobody can say how—

Speaker 3 (02:49):

Well, doesn’t that just make it indefinite if it's ever asserted in litigation?

Seth Lloyd (02:55):

Well, it may make it indefinite—

Speaker 3 (02:57):

Or it may make it unworkable, so nobody infringes either. Like we were talking about last time, <laugh>, I know you don’t want to have to wait, but—

Seth Lloyd (03:04):

I think it probably makes the construction indefinite. But I think there’s a precursor question, which is the reason why nobody can say how much delay is too much, Judge Hughes, is because nothing in the claim suggests any such limit, right? The claim is simply silent. The key words that the board focused on “when,” “at the time,” “immediate”—none of those words appear in the disputed language. In fact, the patent uses some of those words later in other claims, making clear that when the patentee intended to specify the kind of timing the board was focused on here, it used those kind of words. But here, the claim language just says establishing a first secure connection as being an active connection. Anytime you make a connection active, you satisfied that claim, right?

Speaker 4 (03:46):

In your view, is there a difference between removing the boards timely requirement that you described and accepting that modifying a connection could establish that connection as being active?

Seth Lloyd (03:56):

I think they can be related, but there, there is a difference. And, and I think either is an independent basis for relief here. So, on the timing issue, we're essentially assuming that the claim requires creating a new connection from scratch. And the timing question is, “is there a time restriction that when I create it from scratch at that time, I have to activate it.” So, that’s the first issue. But then the second issue, of course, were fighting the premise that you have to create a new connection from scratch, because again, the claim language just says establishing a connection as an active connection and extending between properties, between addresses, so you can modify a connection and give it those properties. And under—on that issue, I guess we're essentially assuming there would be a timing restriction, but saying, if you modify a connection, you are satisfying the timing restriction and the claim requirement.

Seth Lloyd (04:52):

And I’d like to address that kind of second independent issue. We don’t think you need to read the modification issue if you agree with us on the timing issue. But again, there’s nothing in the claims that suggest you can’t take an existing connection and modify it to give it the properties required in the claims. And in fact, Claim 2 of the patent makes that clear. So, this is on Appendix 33, and you have to kind of look at the relationship between Claim 1 and Claim 2. So, Claim 1 in addition to the first connection limitation we’ve been talking about. Claim 1 also says establishing a second secure connection extending between a second network address and an original network address. So, just as with the language we’ve been talking about, it requires establishing a second connection, extending between two addresses, and then Claim 2 modifies that. Claim 2 says “the method of Claim 1 wherein the method further comprises establishing the second secure connection when the second secure connection does not already exist.”

Seth Lloyd (05:52):

And so, under ordinary claim interpretation principles that strongly implies that Claim 1 covers establishing a connection between two addresses when the connection does already exist, right? And that’s just ordinary English as well, right? So, I mean, I don’t think this has to be too abstract. If you have a connection between A and B and you modify that connection so that the connection is now between A and C, it would be perfectly ordinary English to say, “I’ve now established a connection between A and C.” And, and that’s all that the claim language is talking about here too, modifying a connection that used to be between two points, so that it's now between two new points. You’ve established a connection between those two new points, and that’s further reinforced by unrebutted extrinsic evidence, right? So, both parties’ experts agreed that a secure connection here is simply a collection of data structures below.

Speaker 4 (06:47):

Didn’t you not dispute the construction, but more so dispute the application of the construction? Is that how this is kind of framed below?

Seth Lloyd (06:57):

So, we said that your Honor, in our paper, and then at the same time we explained what we meant by that. So, we agreed that under the plain meaning of the claims, the only question here was application of the claims to the prior art. But then we told the board in the exact same filing that MPH was departing from the plain meaning of the claim. So, in the exact same filing, this is at Appendix 328, we said, “MPH attempts to avoid the prior art by arguing that the claim constructions for establishing and secure connection exclude the mobile host modifying a secure connection from being the claim establishing.” And then just a few pages later at Appendix 332 we said the same thing about our first issue, the timing issue. We said specifically, “although MPH does not construe the term active connection, MPH implicitly does so by arguing that Ahonen in the prior art does not teach the claimed active connection because the security connections are not established as an active connection for immediate use.”

Seth Lloyd (07:56):

And then we finish at the bottom of the page, but nothing in the claims or the specification requires an element of immediacy or particular timing to exist. So, those are the exact issues that we are raising here. And MPH joined issue with us on that. So, MPH’s very next filing right after we said what we said, we agree about the construction, but then the parties obviously disagreed about what that construction meant. MPH’s—this is the introduction of its very next filing. It said the parties have a fundamental disagreement on the construction of the claim term establishing. So yes, the parties agreed that about the forming or creating a new connection, but then the parties completely disagreed about what that meant and what it meant for the scope of the claims. And MPH at from 358 to 363 or 364, the next several pages of this paper joined issue and treated that as a question of claim construction.

Seth Lloyd (08:50):

And that’s how the board understood it and treated it as well. So, the parties were joined that this was an issue of claim construction. The board decided the issue of claim construction if you look at the boards brief, right? So, there’s, sorry, not brief, but the board’s decision from appendix pages starting at appendix page 14 through appendix page 19. The boards entire discussion focuses on the claim language, what the claim language requires, what the specification says, it’s a claim construction discussion. And only at Appendix 19 after adopting its construct, its erroneous construction. Does it say—does it then turn to the part and says as two opponents’ disclosure? So, it clearly signals now we're discussing application of the claims to the prior art. And so, the error the board made was in the construction. And again, there are two independent errors, either of which requires relief in Apple’s favor, but nothing in the claims requires any particular timing. There are no timing words in the claims, and the specification is expressly flexible. It says you can register it for use immediately and/or later. Under ordinary claim construction, you don’t limit claims when the specification, when the claims don’t say anything about timing, and the specification says timing is flexible, and then nothing in the claims suggests any kind of modification is required.

Speaker 4 (10:10):

Could you read that immediate and/or later use language to refer to a connection being established as active and then separately capture an existing connection?

Seth Lloyd (10:20):

I don’t think so, your Honor, because well, if I’m understanding the question correctly, and maybe this is—tell me if this isn’t what you’re getting at. I mean, the board equated immediate use with active and said because there’s somehow immediate use is equated with active, therefore, when the claim uses active, that tells us its immediate. And I think that’s clearly wrong and can’t be the way this is—the way the claim is, means it from looking at Claim 11, right? So, the Appendix 33, this Claim 11 modifies Claim 1. So, Claim 1 again, is that the very end of Claim 1, it talks about registering the already established second secure connection as being the active connection. So similar language, you have to register a second connection as being an active connection. And then Claim 11 says “the method of Claim 1 wherein the second secure connection is registered for immediate and/or later use,” right?

Seth Lloyd (11:17):

So, it would make no sense if active were equated with immediate for then Claim 11 to say, well, yeah, but you can register it for immediate and/or later use that the boards understanding of equating active and immediate would exclude an entire part of Claim 11, which says and/or later use. So, I think, again, the board was wrong there based on ordinary meaning based on the language of the claims themselves and based on the specification, I think again, just the one final point of course, happy to answer any questions, but you know, I think that the key point to remember here, right, is Claim 1, it’s almost like the preamble, right? It’s the environment in which the purported advance is happening because the advance is all about the second connection. You have to have a first connection. It has to be active, and it has to be between these two points. And then you’re going to perform the purported advance, which is to change to the second connection. That’s why none of these limits that the board read into the claims make any sense because the advance here has nothing to do with when and how that first connection is activated or established between two addresses. I see I’m into my rebuttal time. Happy to answer any other questions.

Speaker 1 (12:33):

We will save it for you. Mr. Haan, again.

Brian Haan (12:43):

May it please the court. The court should affirm the board’s decision here for one very straightforward reason, and that’s the claims of the 302 patent all require establishing an active first connection. And Apple’s Ahonen reference only establishes inactive connections. All the connections are established with their flag set to off indicating inactive status. This is at Ahonen appendix page 938 to 939, Ahonen’s inactive connections are not active connections. Off does not mean on. So, Ahonen’s secure connection are born inactive while the claim requires that the first secure connection is born active, and Apple’s entire appeal on all claims fails for this simple reason. Talked a little bit during Apple’s argument about the amount of time between when is it established and turned on, and is the claim indefinite for that reason? First of all, we certainly don’t think so, but the question about the amount of time is a red herring because at issue is the Ahonen reference and there’s no time needed to be looked at because the connections are all actually born inactive.

Speaker 1 (14:02):

What about the claim language or later use?

Brian Haan (14:06):

I’m sorry.

Speaker 1 (14:08):

Or later use claim language.

Brian Haan (14:11):

I’m sorry, I didn’t hear the last portion.

Speaker 1 (14:14):

Or later use. It’s on Claim 11. And your opposing counsel was arguing at that point.

Brian Haan (14:21):

Yes, your Honor. And this refers to the second secure connection. And so really the disputed limitation with respect to the board’s decision is on establishing a first secure connection. So, Claim 11 really only speaks to registered for immediate or later use with respect to the second secure connection. And we think the board correctly found that on the first secure connection, that language actually requires as being an active connection. That language is not there with respect to the second secure connection. And I think what’s important here, and what I didn’t hear a lot from Apple’s council is this agreed construction, right? So MPH is actually the party who proposed a construction for establishing, meaning forming or creating new secure connections. And Apple agreed to that construction. And now when you read that construction together with the rest of the claim phrase, you have forming or creating a new secure connection as an active connection.

Brian Haan (15:24):

And so, forming or creating something new, it denotes a particular timing. You only form or create something new one time. It's only new at one instance. And as an active connection, is a prepositional phrase, right? It modifies the prior. So, you’re forming or creating something new as active. It's born active. And so that’s why the board—the board actually read that agreed construction and it read it with the context of the surrounding claim language. And really, the appeal here is about that language as being an active connection. And neither party asked the board to construe that claim language.

Speaker 4 (16:03):

Could a party avoid infringement by preregistering construction connections and then only subsequently activating them?

Brian Haan (16:18):

Well, the claim requires, Your Honor, that at least a first secure connection is established, formed, or created as a new secure connection. And so, I guess I’d like to see specifically an embodiment before I concede that it’s a non-infringement theory. I understand that parties’ endeavor to practice the prior art as a means of non-infringement, but it would be difficult to me to concede that it’s a particular non‑infringement.

Brian Haan (16:51):

But again, this issue about the forming or creating a new secure connection within the context of the rest of the claim phrase is very important. And I think Apple, frankly, in their briefing and their argument today, they’re running from that agreed construction of forming or creating a new secure connection, because as I said, it denotes a particular timing. It's only new once, right? And second of all, because their alternative argument, which they’re framing now is a claim construction argument, but really this was only made in the context of the differences between the claim and the prior art, which is a factual question below.

Speaker 4 (17:26):

What about the fact that they said they agreed to the construction, but then said that there is this other dispute that counsel outlined? What do you make of that?

Brian Haan (17:36):

Thanks, Your Honor. I’m glad you raised it because if I can direct your attention very specifically to Apple’s reply brief, this is appendix page 320, and Apple says, very unequivocally, “the parties do not dispute the claim construction for the term establishing. Establishing should be construed to mean forming or creating a new secure connection as proposed by MPH.” And then the very next sentence speaks specifically to what you’re asking, Apple says, “but the parties do dispute how that definition is applied to Ahonen in this proceeding.” But of course, for obviousness, the scope and content of the prior art and the differences between the claims and the prior art, those are factual inquiries underlying obviousness. So, Apple, makes the number of arguments of where a claim construction or claim scope was made. But if you look at each one of these instances in the record very clearly, they’re all made in a discussion of applying Ahonen or applying the claims rather to Ahonen.

Brian Haan (18:36):

So, this is a factual question. It should be reviewed for substantial evidence here, not de novo. They don’t get a brand-new opportunity to argue new claim constructions. And this claim construction—like I said, forming or creating a new secure connection, this actually speaks specifically to their second argument on modifying a claim. And that’s because modifying something that already exists, which is what they’re arguing Ahonen does. This is clearly not forming or creating a new secure connection. No one would say that when you modify something, it becomes new at one time or another. This courthouse was just the National Courts Building, right? And then, one day it was renamed the Howard T Markey Courts Building, right? It was modified in that way. Did that make it a new court, a new courthouse? I don’t think so.

Brian Haan (19:32):

And I think the same holds true here with respect to secure connections. Moreover, the 302 patent expressly distinguishes establishing secure connections from updating secure connections. At column seven, lines 39 to 58, we talk about secure connections being established by forming new security associations. But, at the bottom of column seven and up into top of column eight through lines 12, it describes secure internet connections being updated by a way of a request message that updates the security associations. So, this is more akin to what they’re accusing or what they’re relying on in the prior art, is modifying a connection. But the claims here don’t claim updating or modifying connection. They claim establishing.

Speaker 4 (20:25):

So, if you modify a preestablished connection to be active, do you contend that would infringe? I’m trying to get a sense of the practical impact here.

Brian Haan (20:35):

If we modify?

Speaker 4 (20:37):

Preestablished connection to be active.

Brian Haan (20:43):

Well, for instance, if you look at the second secure connection, your Honor, the second secure connection is established in Element A, and you move through the claim and the first terminal checks to see if the second secure connection already exists. And, if it does, then it makes that the active connection. And so, at that point, there is a registration request made to—at least in some embodiments, you have to register that second secure connection as an active connection. So, there’s a modification made to the second secure connection in order to make it active. So, in that instance, I think you meet the claims. But here again, we're talking about the first secure connection, which is born as active.

Speaker 4 (21:53):

Do you agree that the column seven lines 25 through about 30 would relate to this whole issue of modifying a connection to make it active?

Brian Haan (22:02):

Column seven, lines 25 through—?

Speaker 4 (22:05):

About 30?

Brian Haan (22:17):

Yes, your Honor, I think that does speak pretty specifically to Claim 1. You have Claim 1, the first secure connection being established as active. The second secure connection is, it has no specific requirement. And I think we talked about line 45 later in this effect. When it says, when a secure connection is formed, it could be registered for immediate or later use. And so, in the claim, you have a first secure connection, which is established as active. And so, back to your line, 25 through 30, you have that one active connection, and the second secure connection—it’s not specifically required by the claim. So, that could be registered for immediate or later use. So, if it's later use, then at that time, you would only have one active connection. You would have a first secure connection, which is active.

Speaker 1 (23:19):

Anything further, counsel?

Brian Haan (23:21):

Yes, your Honor, quickly. Apple made a brand-new argument in this briefing I’d like to address very quickly about the app—the patent only being a trivial variation of the prior art. And respectfully, this was a brand-new argument that Apple never made below. And second of all, this is an argument for which there was no evidence in the record below. And so, I think for that reason, Apple then chose to rely on the patent itself. Unfortunately, for Apple, it relied on the summary of the invention. And specifically, back to that disclosure, we’ve discussed a number of times today about registering a connection for being for immediate or later use. And they said, well, these are the two options that were well known in the art, and everyone knew it.

Brian Haan (24:12):

But there’s nothing about that disclosure. That’s the summary of the invention. That’s no admission about what happens in the prior art. And if we look at Apple’s briefing on this issue, repeatedly when they say something is known in the art what they’re really referring to is the IP sec. protocol. And I think we’ve looked at—we’ve talked about the IP sec. protocols very generally, and you know, MPH was not claiming to have invented basically an IP sec. protocol. These are specific implementations of how they are used. And so, I guess one last point to make on that is that Ahonen clearly only offers one choice when it came to those two, and that’s registering connections as inactive. They—and there’s nothing about the Ahonen reference, which suggests or teaches that those connection could be registered for immediate use. And I think one important point to note about the Ahonen reference here if we look at the claims, this is on appendix page 947.

Brian Haan (25:21):

This is claim 1 of the Ahonen reference, and you have element one is “negotiating the one or more security associations.” So, this is establishing your secure connections, but the rest of the disclosure describes that those are all with initially set with the flag set to off. So then, when you look at the claim element two, this says, “subsequently in initiating a communication between the mobile host and the security gateway, sending an author authentication certificate,” this authentication certificate is what requests the activation. So, this is the claim of the patent. If you—if we go back to the summary of the invention, this is on appendix page 927. It’s the exact same disclosure. So, this is—this goes to the very heart of the Ahonen invention. And so, this is one difference that was identified in the appeal. Much of this appeal relies on this difference in Ahonen, because the board didn’t need to get any further than really the first element of these claims. That this first secure connection was born active and the Ahonen’s disclosure only establishes inactive connections and makes those act—those connections activated subsequently at a later time, which was different.

Brian Haan (26:51):

I think, unhappy with the result below, what Apple was trying to do is change and complicate the issues on this appeal. It’s ignoring the agreed construction it made below, it's accusing the board of sua sponte construing the claims. Its asserting new constructions, it’s asserting this new trivial variation theory, but none of this changes the fact that Ahonen’s connections are all born inactive with their flag set to off, and the claims all require a first secure connection that’s born active. So, the board’s decision should be affirmed in all respects.

Speaker 4 (27:26):

One last question on Ahonen. Does the—is Ahonen’s remote control flag about whether connection is remotely activated, not whether it’s even active in the first place? How do you do that?

Brian Haan (27:39):

Yes, your Honor. I see my time is expiring, but I—

Speaker 1

You may answer question.

Brian Haan

Yeah, so if we look at the bottom of page—appendix page 938 into the top of appendix page 939.

Brian Haan (27:59):

This is the authorization certificate that’s sent at the conclusion of the preparations phase. So. there’s two certificates. There’s one, they’re in the preparations phase, and in this one, the very last line of appendix 938 says, well, initially in the informational certificate, this flag is set to off, right? So then, we conclude the preparations phase and move on to the remote-control function that your Honor referred to. And now we get into appendix page 940, and at the bottom of page appendix page 40, this is the talking about this remote-control authorization certificate. This is the subsequent certificate, and this is where the remote-control flag is set to on.

Speaker 6 (28:43):

Thank you, counsel.

Brian Haan (28:45):

All right, thank you very much.

Speaker 6 (28:47):

Mr. Lloyd has a little rebuttal time.

Seth Lloyd (28:50):

Thank you, your Honor. Three quick points. First, we heard a lot about the agreed construction, but at the board, both the parties and the board understood that there—although the parties had agreed on these terms, there was complete disagreement about what that meant. So, when MPHs counsel made the same point here, well, the parties agreed to forming or creating a new connection. The boards response, this is at Appendix 434 at the hearing was, “yeah, but the parties dispute the meaning of the term new.” So, there was no agreement. Yes, they agreed on these words, but everybody understood that they were saying they meant completely different things by these words. And so, the only way to resolve that dispute is to look at the claim language, which is, at the end of the day, is what defines the scope of the claims. And when you look at the claim language, anytime you see the word establishing, you have to ask yourself, “establishing what?” What is it that’s being established?

Seth Lloyd (29:38):

It’s not the first connection per se, it’s the first—it's properties of the first connection. So, it’s like, if I say in ordinary English, “establishing a city as being a tourist destination,” nothing about that sentence suggests a timing about when the city is going to be made a tourist destination. It doesn’t suggest at the time the city is created from scratch, a new city, that at that time I’m making a tourist destination. Anytime you give it the property of being a tourist destination, you’ve established it as being a tourist destination. And the “as being,” council focused on the “as being” language, that’s the language that tells you what’s being established as a property. It’s a state of being, right? So, you have to give a connection that property. The opposing counsel talked about the prior art Ahonen and said, well, when they’re created brand new, they’re not made active, but there’s no dispute that they later are made active.

Seth Lloyd (30:32):

Judge Cunningham, you asked about the remote function. Counsel MPH agreed at the board at Appendix 300 to 301, that, in fact, Ahonen does activate those connections. They are made active. It simply happened, in MPH’s and the boards’ view, too late in time. But there’s nothing in the claims that suggests any timing restriction. Finally, I did want to clarify a point about Claim 11. Counsel said, “well, that’s about the second connection, and here we’re talking about the first connection.” But the point about Claim 11 is how the claims use the word “active.” Yes, it’s about the second connection, but Claim 1 says the second connection is registered as active. Claim 11 then says, wherein the second secure connection is registered for immediate and/or later use. So that tells you the word active can’t be equated with immediate and with immediate only. It must cover both immediate and/or later use. And the boards construction improperly excluded that and/or later use. And for that reason, the board’s decision should be reversed.

Speaker 1 (31:35):

Thank you, counsel. Case will be taken under submission.