Apple Inc. v. Smart Mobile Technologies LLC

The case, Apple Inc. v. Smart Mobile Technologies LLC (IPR2022-00981), involves a patentability challenge initiated by Apple Inc., a global technology company known for its consumer electronics, software, and online services, against Smart Mobile Technologies LLC. Smart Mobile Technologies LLC has been identified as a patent assertion entity (PAE) focused on wireless technology IP and wireless communication technologies. This indicates that Smart Mobile Technologies LLC primarily asserts patents for licensing or litigation rather than manufacturing products. The patents asserted by Smart Mobile Technologies against Apple in related proceedings broadly target wireless device functionality, specifically implicating modern mobile devices such as iPhones, iPads, and Apple Watch products.

The primary patent at issue in IPR2022-00981 is U.S. Patent No. 8,472,936, which covers dynamically configurable IP-based wireless devices and networks. This patent describes architectural methods for configuring wireless devices dynamically over IP networks, a technology foundational to modern mobile operating systems and wireless protocol management in devices like iPhones. The procedural posture of this case began at the Patent Trial and Appeal Board (PTAB), where Apple, as the petitioner, challenged the patentability of claims from the '936 patent. The PTAB's Final Written Decision was subsequently appealed to the U.S. Court of Appeals for the Federal Circuit (CAFC), the specialized appellate court with exclusive jurisdiction over U.S. patent matters.

This case is notable due to the Federal Circuit's ruling on issue preclusion. The appellate court reversed in part, vacated in part, and remanded the PTAB's decision, concluding that the Board was precluded from finding certain claims of the '936 patent patentable. This preclusion stemmed from earlier IPRs (IPR2022-00980 and IPR2022-00808) where related patents, U.S. Patent Nos. 8,761,739 and 8,442,501, which share the same specification and recite similar claims, had been found unpatentable and those decisions were not appealed by Smart Mobile Technologies. The Federal Circuit emphasized that allowing a patentee to assert claims substantially similar to those previously found unpatentable would undermine the integrity of the patent system. This ruling carries significant weight for wireless patent infringement litigation and highlights the strategic importance of IPRs in challenging patent validity, especially against patent assertion entities.

The case of Apple Inc. v. Smart Mobile Technologies LLC, IPR2022-00981, primarily concerns an inter partes review (IPR) proceeding before the Patent Trial and Appeal Board (PTAB) and its subsequent appeal to the Federal Circuit regarding the patentability of U.S. Patent No. 8,472,936.

Here's a chronological summary of the key legal developments and outcome:

• IPR Petition Filing: Apple Inc. petitioned for inter partes review of U.S. Patent No. 8,472,936. While the exact filing date of the petition for IPR2022-00981 is not explicitly stated in the provided search results, the IPR number indicates it was filed in 2022. Apple also simultaneously challenged related patents, U.S. Patent Nos. 8,761,739 and 8,442,501, in IPR2022-00980 and IPR2022-00808, respectively.

• PTAB Final Written Decision: The PTAB issued a Final Written Decision in IPR2022-00981, finding that Apple failed to prove that the challenged claims of U.S. Patent No. 8,472,936 were unpatentable as obvious. The termination date of the IPR was January 21, 2026.

• Federal Circuit Appeal (Case No. 24-1352): Apple Inc. appealed the PTAB's Final Written Decision to the U.S. Court of Appeals for the Federal Circuit. The appeal was filed on January 12, 2024, and concluded on January 21, 2026.

• Federal Circuit Decision - Reversed in Part, Vacated in Part, and Remanded (2026-01-21): The Federal Circuit, in an opinion authored by Judge Reyna, reversed in part, vacated in part, and remanded the PTAB's final written decision.

  • The court found that the PTAB was precluded from finding certain claims of U.S. Patent No. 8,472,936 patentable due to issue preclusion.
  • This preclusion arose because Apple had previously challenged related patents, U.S. Patent Nos. 8,761,739 and 8,442,501, in IPR2022-00980 and IPR2022-00808. In those earlier IPRs, the Board had found all challenged claims unpatentable as obvious, and Smart Mobile Technologies LLC did not appeal those decisions.
  • The Federal Circuit determined that the challenged claims of the '936 patent disclosed "substantively identical limitations" as the invalidated claims of the '739 patent.
  • Specifically, the Federal Circuit reversed the Board's judgment regarding claim 1 of the '936 patent, effectively deeming it unpatentable.
  • The court vacated the Board's judgment regarding dependent claims 8-11, 13, 15, 17, and 19 of the '936 patent and remanded the case for further consideration of their patentability.
  • The Federal Circuit concluded that all four factors for issue preclusion were met: the issue was the same as in a prior action, it was actually litigated, the determination was essential to the final judgment, and Smart Mobile had a full and fair opportunity to litigate.

There is no specific information in the provided search results about initial pleadings, pre-trial motions, claim construction (Markman) outcomes, discovery milestones, or trial events typically associated with district court patent infringement litigation for this specific case (IPR2022-00981). This is consistent with it being an IPR proceeding, which is an administrative process at the USPTO. While IPRs are often filed in response to infringement litigation, the provided information focuses solely on the IPR and its appeal.

Apple Inc., the plaintiff in IPR2022-00981, was represented by a team of attorneys from Fish & Richardson P.C. and Haynes and Boone, LLP, in the related appeals before the Federal Circuit. While a specific docket entry directly detailing all counsel for IPR2022-00981 at the PTAB was not found, these attorneys appeared for Apple in appeals concerning closely related inter partes reviews against Smart Mobile Technologies LLC (e.g., IPR2022-01002, IPR2022-00980, IPR2022-00808, and IPR2022-01222), indicating their probable roles as lead counsel and appellate counsel for Apple in these related proceedings.

Counsel of Record for Apple Inc.:

From Fish & Richardson P.C.:

• Nitika Gupta Fiorella

  • Role: Lead Appellate Counsel (as argued for appellant in related Federal Circuit case)
  • Firm & Office: Fish & Richardson P.C., Wilmington, DE
  • Experience Note: Frequent representative in district courts, PTAB, and Federal Circuit, with experience across a wide range of technologies, and has successfully argued and won numerous appeals before the Federal Circuit, including rare reversals of PTAB decisions.

• Alexander Michael Pechette

  • Role: Counsel (listed as also representing appellant in related Federal Circuit case)
  • Firm & Office: Fish & Richardson P.C., Boston, MA
  • Experience Note: Focuses on patent trials and appeals, drawing on deep technical knowledge and experience as a former Federal Circuit clerk, with cases spanning various technologies including surgical implants, nuclear medicine, and computer software.

• Daniel Haran Wade

  • Role: Counsel (listed as also representing appellant in related Federal Circuit case)
  • Firm & Office: Fish & Richardson P.C., New York, NY
  • Experience Note: Focuses on patent litigation in electrical and computer technologies, trade secret litigation, and privacy and data security, with experience in all aspects of complex intellectual property litigation in U.S. district courts and the ITC.

From Haynes and Boone, LLP:

• Debra Janece McComas

  • Role: Counsel (listed as also representing appellant in related Federal Circuit case)
  • Firm & Office: Haynes and Boone, LLP, Dallas, TX
  • Experience Note: Litigator and appellate lawyer with extensive experience in patent appeals, ranked among top-performing attorneys at the Federal Circuit, and has handled numerous cases involving patent infringement and complex jurisdictional disputes.

• Angela M. Oliver

  • Role: Counsel (listed as also representing appellant in related Federal Circuit case)
  • Firm & Office: Haynes and Boone, LLP, Washington, D.C.
  • Experience Note: Appellate attorney focusing on intellectual property, technology, and administrative law, with particular experience handling appeals before the Federal Circuit, where she has argued over a dozen cases and been recognized among the top-performing and most active attorneys.

• Laura Vu

  • Role: Counsel (listed as also representing appellant in related Federal Circuit case)
  • Firm & Office: Haynes and Boone, LLP, San Francisco, CA
  • Experience Note: Focuses on appeals before the Federal Circuit, federal district court litigation, and post-grant proceedings before the PTAB, leveraging her experience as a former law clerk to a Federal Circuit judge and a patent examiner at the USPTO.

Counsel for Smart Mobile Technologies LLC in Apple Inc. v. Smart Mobile Technologies LLC (IPR2022-00981, Federal Circuit Case 24-1352)

Identifying the exact counsel of record for Smart Mobile Technologies LLC in Federal Circuit Case No. 24-1352, the appeal of IPR2022-00981 concerning U.S. Patent No. 8,472,936, requires careful review of appellate filings. While some search results indicate that Smart Mobile Technologies LLC has been represented by Graves & Shaw LLP in other Federal Circuit appeals against Apple, specifically Case No. 24-1289 for U.S. Patent No. 9,756,168, and in a district court case against Apple, the available public opinions for case 24-1352 do not explicitly name Smart Mobile's counsel.

Given the information available, the following attorneys from Graves & Shaw LLP are generally active in patent litigation for Smart Mobile Technologies LLC and similar entities against major technology companies. While their direct involvement in this specific Federal Circuit appeal (24-1352) is not explicitly stated in the provided search snippets, they are frequently identified as counsel for Smart Mobile Technologies in related matters.

Here are the attorneys based on their general representation of Smart Mobile Technologies LLC in patent litigation:

• Greer N. Shaw

  • Role: Likely lead counsel.
  • Firm: Graves & Shaw LLP, Los Angeles, CA.
  • Experience Note: Top-rated intellectual property litigation attorney with experience representing plaintiffs in patent infringement disputes against major technology companies, including Apple.

• Philip J. Graves

  • Role: Likely lead counsel.
  • Firm: Graves & Shaw LLP, Los Angeles, CA.
  • Experience Note: Specializes in intellectual property litigation and business litigation, actively involved in appellate efforts for Smart Mobile Technologies LLC.

It is important to note that without direct access to the Federal Circuit docket for case 24-1352 (Apple Inc. v. Smart Mobile Technologies LLC, concerning IPR2022-00981), the precise and exhaustive list of counsel, including their specific roles (e.g., local counsel, of counsel) and office locations for this particular case, cannot be definitively confirmed from the provided public information. The above reflects counsel who have frequently represented Smart Mobile Technologies LLC in similar patent litigation and appeals.