Uniloc 2017 LLC v. Apple Inc. ( 2021 )

Case: 19-1197 Document: 76 Page: 1 Filed: 02/11/2021
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
UNILOC 2017 LLC,
Appellant
v.
APPLE INC., SNAP INC., FACEBOOK, INC.,
WHATSAPP, INC.,
Appellees
______________________
2019-1197
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in Nos. IPR2017-
00221, IPR2017-01612, IPR2017-01636.
______________________
Decided: February 11, 2021
______________________
JAMES ETHERIDGE, Etheridge Law Group, Southlake,
TX, for appellant. Also represented by RYAN S. LOVELESS,
BRETT MANGRUM, JEFFREY A. STEPHENS.
LAUREN B. FLETCHER, Wilmer Cutler Pickering Hale
and Dorr LLP, Boston, MA, for appellee Apple Inc. Also
represented by S. CALVIN WALDEN, New York, NY;
BRITTANY BLUEITT AMADI, HEATH BROOKS, Washington,
DC.
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2 UNILOC 2017 LLC v. APPLE INC.
HEIDI LYN KEEFE, Cooley LLP, Palo Alto, CA, for appel-
lees Snap Inc., Facebook, Inc., WhatsApp, Inc. Also repre-
sented by MARK R. WEINSTEIN. Appellee Snap Inc. also
represented by REUBEN HO-YEN CHEN. Appellees Face-
book, Inc., WhatsApp, Inc. also represented by LOWELL D.
MEAD; PHILLIP EDWARD MORTON, Washington, DC.
______________________
Before LOURIE, WALLACH, and CHEN, Circuit Judges.
WALLACH, Circuit Judge.
Appellee, Apple Inc. (“Apple”), sought inter partes re-
view (“IPR”) of claims 1–6, 14, 15, 17–20, 28, 29, 31–34, 40–
43, 51–54, 62–65, and 68 (collectively, “the Challenged
Claims”) of U.S. Patent No. 7,535,890 (“the ’890 patent”),
owned by Appellant, Uniloc 2017 LLC (“Uniloc”). 1 The
United States Patent and Trademark Office’s (“USPTO”)
Patent Trial and Appeal Board (“PTAB”) issued a final
written decision (“the Final Written Decision”), concluding
that Petitioners had “establishe[d], by a preponderance of
the evidence, that all [the C]hallenged [C]laims . . . are un-
patentable.” Apple Inc. v. Uniloc USA, Inc., No. IPR2017-
00221, 2018 WL 4210334, at *21 (P.T.A.B. May 23, 2018). 2
Uniloc appeals. We have jurisdiction pursuant to
28 U.S.C. § 1295(a)(4)(A). We affirm.
1 Appellees, Snap Inc. (“Snap”), Facebook, Inc. (“Fa-
cebook”), and WhatsApp Inc. (“WhatsApp”), were subse-
quently joined to the instant IPR as petitioners along with
Apple (collectively, “Petitioners”). J.A. 105, 123.
2 While the Final Written Decision lists Uniloc USA,
Inc. and Uniloc Luxembourg S.A. as the “Patent Owner,”
Apple, 2018 WL 4210334, at *1, the Patent Owner’s Notice
of Appeal states that Uniloc 2017 LLC now owns the ’890
patent, ECF No. 1, Doc. 2 at 1.
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UNILOC 2017 LLC v. APPLE INC. 3
BACKGROUND
I. The ’890 Patent
Entitled “System and Method for Instant [Voice over
Internet Protocol (‘VoIP’)] Messaging,” the ’890 patent
“generally relates to Internet telephony (IP telephony)”
and “[m]ore particularly . . . to a system and method for en-
abling local and global instant VoIP messaging over an [In-
ternet Protocol (‘IP’)] network, such as the Internet[.]” ’890
patent col. 1 ll. 7–11. The ’890 patent states that while
“[v]oice messaging” and “[i]nstant text messaging” in VoIP
are “known” in the prior art, id. col. 2 ll. 11–23, “there is a
need in the art for providing local and global instant voice
messaging over VoIP,” id. col. 2 ll. 40–41. Thus, the ’890
patent discloses a “local instant voice messaging (IVM) sys-
tem” comprising a “local IVM server . . . enabled to provide
instant voice messaging to one or more IVM clients[.]” Id.col. 6 ll. 40–49.
The ’890 patent explains that IVM clients are “VoIP
telephone[s]” that “are commercially available from many
vendors,” id. col. 7 ll. 14–25, and “which comprise[] a screen
display . . . capable of displaying instant voice messages
recorded and/or received by a user of the IVM client[,]” id.col. 7 ll. 15–18. The IVM clients may “display[] a list of one
or more IVM recipients” from which a user selects “one or
more IVM recipients[.]” Id. col. 8 ll. 43–48. When in a “rec-
ord mode,” “[t]he user selection . . . generates a start signal
to the IVM client” and “[i]n response . . . , the IVM cli-
ent . . . records the user’s speech into a digitized audio
file . . . (i.e., instant voice message) stored on the IVM cli-
ent[.]” Id. col. 7 l. 47–col. 8 l. 1. “Once the recording of the
user’s speech is finalized, . . . [t]he user generates [a] send
signal” and “[t]he IVM client . . . transmits the digitized au-
dio file . . . to the local IVM server[.]” Id. col. 8 ll. 1–12. The
local IVM server “delivers the transmitted instant voice
message to the selected one or more recipients” which “are
enabled to display an indication that the instant voice
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4 UNILOC 2017 LLC v. APPLE INC.
message has been received and audibly play the instant
voice message to an associated user.” Id. col. 8 ll. 17–22.
The ’890 patent explains, however, “that only the available
IVM recipients, currently connected to the IVM server . . . ,
will receive the instant voice message” and “that if a recip-
ient IVM client is not currently connected to the local IVM
server . . . (i.e., is unavailable), the IVM server temporarily
saves the instant voice message and delivers it to the IVM
client when the IVM client connects to the local IVM
server . . . (i.e., is available).” Id. col. 8 ll. 22–29.
Independent claim 1 of the ’890 patent recites:
An instant voice messaging system for delivering
instant messages over a packet-switched network,
the system comprising:
a client connected to the network, the client
selecting one or more recipients, generat-
ing an instant voice message therefor, and
transmitting the selected recipients and
the instant voice message therefor over the
network; and
a server connected to the network, the
server receiving the selected recipients and
the instant voice message therefor, and de-
livering the instant voice message to the se-
lected recipients over the network, the
selected recipients enabled to audibly play
the instant voice message, and the server
temporarily storing the instant voice mes-
sage if a selected recipient is unavailable
and delivering the stored instant voice
message to the selected recipient once the
selected recipient becomes available.
Id. col. 23 l. 55–col. 24 l. 3. Independent claim 14 recites:
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UNILOC 2017 LLC v. APPLE INC. 5
An instant voice messaging system for delivering
instant messages over a plurality of packet-
switched networks, the system comprising:
a client connected to a local network, the
client selecting one or more external recip-
ients connected to an external network out-
side the local network, generating an
instant voice message therefor, and trans-
mitting the selected recipients and the in-
stant voice message therefor over the local
network and the external network; and
a server connected to the external network
the server receiving the selected recipients
and the instant voice message therefor, and
delivering the instant voice message to the
selected recipients over the external net-
work, the selected recipients being enabled
to audibly play the instant voice message,
and the server temporarily storing the in-
stant voice message if a selected recipient
is unavailable and delivering the stored in-
stant voice message to the selected recipi-
ent once the selected recipient becomes
available.
Id. col. 25 ll. 22–39. Claim 16, which depends from inde-
pendent claim 14, further recites:
[W]herein the local network is a network within an
enterprise.
Id. col. 25 ll. 52–54. Claim 17, which also depends from
independent claim 14, further recites:
[W]herein the external network is the Internet.
Id. col. 25 ll. 55–56. Independent claim 28 recites:
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6 UNILOC 2017 LLC v. APPLE INC.
An instant voice messaging system for delivering
instant messages over a plurality of packet-
switched networks, the system comprising:
a client connected to an external network,
the client selecting one or more recipients
connected to a local network, generating an
instant voice message therefor, and trans-
mitting the selected recipients and the in-
stant voice message therefor over the
external network; and
a[n] external server system connected to
the external network, the external server
system receiving the selected recipients
and the instant voice message, and routing
the selected recipients and the instant
voice message over the external network
and the local network.
a local server connected to the local net-
work the local server receiving the selected
recipients and the instant voice message
therefor, and delivering the instant voice
message to the selected recipients over the
local network, the selected recipients being
enabled to audibly play the instant voice
message, and the local server temporarily
storing the instant voice message if a se-
lected recipient is unavailable and deliver-
ing the stored instant voice message to the
selected recipient once the selected recipi-
ent becomes available.
Id. col. 27 ll. 6–28.
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UNILOC 2017 LLC v. APPLE INC. 7
II. The Prior Art
A. Malik
Entitled “Voice Message Delivery Over Instant Mes-
saging,” U.S. Patent No. 7,123,695 (“Malik”) “is generally
related to communications and, more particularly, is re-
lated to a system and method for relaying voice messages
over a communication network.” J.A. 1173; see J.A. 1163–
80 (Malik). Malik discloses “a system and method for send-
ing voice instant messages [(‘VIMs’)],” and “includes a com-
munications client of a user that is configured to generate
a [VIM] and send a [VIM] to another user.” J.A. 1163. Ma-
lik explains that “[a]n instant messaging network recog-
nizes when a user is [‘]present’ on the network.” J.A. 1173.
As a result, “the network sends [a] notification to other us-
ers (usually members of a ‘buddy list’ or ‘contact list’) that
are also logged on the network that the user is ‘present.’”
J.A. 1173. In relevant part, Malik describes an exemplary
system or method whereby “when an authorized user at-
tempts to send an instant message to [a] first user and the:
first user is not present and/or available, the authorized
user may be given the opportunity to generate a [VIM] for
the first user.” J.A. 1175.
B. Väänänen
Entitled “Instant Video- and Voicemail Messaging
Method and Means,” WIPO Pub. No. WO 02/17658
(“Väänänen”) discloses “a server[-]centric method and
means for instant voice and video mail messaging.”
J.A. 1181; see J.A. 1181–217 (Väänänen). Väänänen de-
scribes, in relevant part, “[a] user choos[ing] a recipient for
a voice[] or video mail from the contacts book of the termi-
nal[,]” after which “[t]he terminal forms a data connection
to a server[.]” J.A. 1183. Väänänen explains that the mes-
sage is then recorded and “store[d] . . . to a database.”
J.A. 1184. “If the recipient is unavailable, the message
may be stored on the server for some time, and attempts to
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8 UNILOC 2017 LLC v. APPLE INC.
deliver the message may be taken at timely intervals.”
J.A. 1189.
DISCUSSION
Uniloc argues that the PTAB did not properly construe
the terms “local network” and “external network” recited in
claims 14, 16, 17, 28, 31, 51, and 62 of the ’890 patent. Ap-
pellant’s Br. 12–21. Uniloc also challenges, as unsupported
by substantial evidence, the PTAB’s determinations that
independent claims 1, 14, 28, 40, 51, and 62 would have
been obvious over Malik and Väänänen. Id. at 5–12. After
stating the applicable standard of review, we address each
argument in turn.
I. Standard of Review
“We review the PTAB’s factual findings for substantial
evidence and its legal conclusions de novo.” Redline Detec-
tion, LLC v. Star Envirotech, Inc., 811 F.3d 435, 449 (Fed.
Cir. 2015) (citation omitted). “Substantial evidence is
something less than the weight of the evidence but more
than a mere scintilla of evidence,” meaning that “[i]t is such
relevant evidence as a reasonable mind might accept as ad-
equate to support a conclusion.” In re NuVasive, Inc., 842
F.3d 1376, 1379–80 (Fed. Cir. 2016) (internal quotation
marks and citations omitted). “If two inconsistent conclu-
sions may reasonably be drawn from the evidence in rec-
ord, the PTAB’s decision to favor one conclusion over the
other is the epitome of a decision that must be sustained
upon review for substantial evidence.” Elbit Sys. of Am.,
LLC v. Thales Visionix, Inc., 881 F.3d 1354, 1356 (Fed.
Cir. 2018) (internal quotation marks, brackets, and cita-
tion omitted).
II. Claim Construction
A. Legal Standard
At the time the IPR petition was filed in this case, the
PTAB construed claims according to their broadest
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UNILOC 2017 LLC v. APPLE INC. 9
reasonable interpretation (“BRI”) in light of the specifica-
tion. See Samsung Elecs. Co., Ltd. v. Elm 3DS Innovations,
LLC, 925 F.3d 1373, 1376 (Fed. Cir. 2019) (citing 37 C.F.R.
§ 42.100(b) (2017)) (“The [PTAB] construes claims in an un-
expired patent according to their [BRI] in light of the spec-
ification.”); 37 C.F.R. § 42.100(b) (providing that the PTAB
gives “[a] claim . . . its broadest reasonable construction in
light of the specification of the patent in which it ap-
pears”). 3 The “specification includes both the written de-
scription and the claims of the patent.” Cisco Sys., Inc. v.
TQ Delta, LLC, 928 F.3d 1359, 1362 (Fed. Cir. 2019) (inter-
nal quotation marks and citation omitted). “A patent’s
specification, together with its prosecution history, consti-
tutes intrinsic evidence to which the PTAB gives priority
when it construes claims.” Knowles Elecs. LLC v. Cirrus
Logic, Inc., 883 F.3d 1358, 1361−62 (Fed. Cir. 2018) (cita-
tion omitted). 4 We review the PTAB’s assessment of the
intrinsic evidence de novo. See id. at 1362.
B. The PTAB Properly Construed the Terms
“External Network” and “Local Network”
The PTAB concluded that “there is a difference be-
tween the terms” “external network” and “local network”
3 Although the USPTO has revised its claim con-
struction standard consistent with the standard set forth
in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005)
(en banc), and its progeny, we apply the BRI standard in
this case, as Apple filed the IPR petition giving rise to this
case before November 13, 2018. J.A. 260; see 83 Fed.
Reg. 51,340, 51,358 (Oct. 11, 2018) (codified at 37 C.F.R.
§ 42.100(b)).
4 A patent’s prosecution history “consists of the com-
plete record of the proceedings before the [US]PTO,” which
provides “evidence of how the [US]PTO and the inventor
understood the patent.” Phillips, 415 F.3d at 1317 (cita-
tions omitted).
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10 UNILOC 2017 LLC v. APPLE INC.
recited in claims 14, 16, 17, 28, 31, 51, and 62 of the ’890
patent “in that they refer to networks of differing geo-
graphic scope relative to each other.” Apple, 2018 WL
4210334, at *5. The PTAB explained that because its obvi-
ousness analysis did “not require a complete, explicit con-
struction of either term,” it addressed their construction
“only to the extent necessary to resolve the issues in this
case.” Id. Uniloc argues that the PTAB erred “by adopting
its construction sua sponte for the first time in its Final
Written Decision,” Appellant’s Br. 13, and that its con-
struction renders other claim language “superfluous,” id.
at 17. We disagree with Uniloc.
The PTAB properly construed the terms “external net-
work” and “local network” as recited in the Challenged
Claims. We begin our analysis with the claim language.
See In re Power Integrations, Inc., 884 F.3d 1370, 1376
(Fed. Cir. 2018) (“Claim construction must begin with the
words of the claims themselves.” (internal quotations,
brackets, and citation omitted)). Independent claim 14 re-
cites, in relevant part, “a client connected to a local net-
work, the client selecting one or more external recipients
connected to an external network outside the local net-
work, . . . transmitting the selected recipients and the in-
stant voice message . . . over the local network and the
external network,” and “a server connected to the external
network, the server . . . delivering the instant voice mes-
sage to the selected recipient over the external network.”
’890 patent col. 25 ll. 24–33 (emphases added). Dependent
claim 16 recites the “instant voice messaging system” of in-
dependent claim 14, “wherein the local network is a net-
work within an enterprise.” Id. col. 25 ll. 52–54 (emphasis
added). Dependent claim 17 recites the “instant voice mes-
saging system” of independent claim 14, “wherein the ex-
ternal network is the Internet.” Id. col. 25 ll. 55–56
(emphasis added). Thus, a plain reading of the claim lan-
guage, in its full context, indicates that the “external net-
work” and “local network” are geographically distinct from
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UNILOC 2017 LLC v. APPLE INC. 11
one another. See, e.g., id. col. 25 ll. 25–26 (referring to the
“external network” as located “outside the local network”)
(emphasis added); col. 27 ll. 9–23 (reciting the
“transmi[ssion] [of] the selected recipients and the [IVM]”
from the “external network” to the “local network”); see
ACTV, Inc. v. Walt Disney Co., 346 F.3d 1082, 1088 (Fed.
Cir. 2003) (“[T]he context of the surrounding words of the
claim also must be considered in determining the ordinary
and customary meaning of those terms.”). Thus, the claim
language supports the conclusion that the “local network”
and the “external network” recited in the Challenged
Claims refer to networks of differing geographic scope.
We turn next to the broader specification. Trs. of Co-
lumbia Univ. v. Symantec Corp., 811 F.3d 1359, 1363 (Fed.
Cir. 2016). Though the specification does not explicitly de-
fine “external network” and “local network,” see generally
’890 patent, it repeatedly uses the words “global” and “ex-
ternal,” in contrast with the word “local,” to describe terms
in relation to one another, see, e.g., col. 1 ll. 8–11 (stating
that “the present invention is directed to a system and
method for enabling local and global instant VoIP messag-
ing over an IP network, such as the Internet”) (emphases
added), col. 2 ll. 40–41 (detailing the “need in the art for
providing local and global instant voice messaging over
VoIP”) (emphases added), col. 5 ll. 27–29 (describing
“transmi[ssion] . . . over the local network and the external
network”) (emphases added), col. 6 ll. 21–22 (stating that
Figure 5 “illustrates an exemplary global IVM system com-
prising a local IVM system and global IVM clients”) (em-
phases added). Consistent with the claim language, the
specification also repeatedly refers to an “external net-
work” as located “outside the local network.” Id. col. 3
ll. 29–30 (emphasis added); see id. col. 3 ll. 24–30 (describ-
ing an “embodiment of the present invention,” in which a
client selects “one or more external recipients connected to
an external network outside the local network”) (emphases
added), col. 3 ll. 46–47 (same), col. 3 ll. 64–65 (same), col. 5
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12 UNILOC 2017 LLC v. APPLE INC.
ll. 4–6 (same). Thus, as with the plain language of the
Challenged Claims, the specification supports the conclu-
sion that the “local network” and the “external network”
recited in the Challenged Claims refer to networks of dif-
fering geographic scope. 5
Uniloc’s counterarguments are unpersuasive. First,
Uniloc argues that the PTAB “adopt[ed] its construction
sua sponte for the first time in its Final Written Decision,
without having first given Uniloc the opportunity to brief
counter[-]arguments.” Appellant’s Br. 13. Uniloc’s argu-
ment is inaccurate. The parties briefed the claim construc-
tion issue, J.A. 194–95 (Apple proposing a construction of
“external network” as “a network that is outside another
network,” and arguing that “[t]he claims recite ‘an external
network outside the local network’”), 340 (Uniloc arguing
that “the words ‘local’ and ‘external’ refer to distinct types
of networks”), and heard argument on the issue at the IPR
hearing, J.A. 476 (Apple arguing that “a local network is
strictly a geographic network based on a distance between
a server and a client and that it is a relative location with
respect to the external [network]”) (emphasis added), 504–
17 (Uniloc arguing that “external” and “local” refers to the
network’s “type”).
Second, Uniloc argues that construing “the qualifier
‘external’” as referring to “a network of differing geographic
scope relative to the local network” would render the claim
language’s recitation of an “external network” as located
5 Neither Petitioners nor Uniloc relied on any por-
tion of the ’890 patent’s prosecution history to support their
respective constructions of “external network” and “local
network.” See generally Appellant’s Br. 12–21; Appellee’s
Br. 44–6; and Reply Br. 8–17. Accordingly, we do not con-
sider it. See Vitronics Corp. v. Conceptronic, Inc., 90
F.3d 1576, 1582 (Fed. Cir. 1996) (providing that we will
consider the prosecution history “if in evidence”).
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UNILOC 2017 LLC v. APPLE INC. 13
“outside the local network” superfluous. Appellant’s Br. 17
(internal quotation marks and alterations omitted); see
Power Mosfet Techs., L.L.C. v. Siemens AG, 378 F.3d 1396,
1410 (Fed. Cir. 2004) (“[I]nterpretations that render some
portion of the claim language superfluous are disfavored.”).
This argument is without merit. “The preference for giving
meaning to all terms . . . is not an inflexible rule that su-
persedes all other principles of claim construction.” Sim-
pleAir, Inc. v. Sony Ericsson Mobile Commc’ns AB, 820
F.3d 419, 429 (Fed. Cir. 2016). Claim language must be
considered in “the context of the surrounding words,”
ACTV, 346 F.3d at 1088, and construed “in light of the [pa-
tent] specification,” Samsung, 925 F.3d at 1376. Here, the
claim language describing an “external network” as “out-
side the local network,” ’890 patent, col. 25 ll. 25–26, pro-
vides context as to the meaning of “external,” and is
consistent with the broader specification’s description of
the claimed invention, see id. col. 3 ll. 24–30 (describing an
“embodiment of the present invention” as “comprising . . .
an external network outside the local network”). 6 Thus,
6 Uniloc similarly argues that “[t]he doctrine of claim
differentiation” refutes the PTAB’s construction, contend-
ing that because “[n]ot all [the challenged] claims which re-
cite ‘external network’ further limit that term with the
phrase ‘outside the local network,’ . . . construing the qual-
ifier ‘external” as referring to a network’s relative geo-
graphic scope “risks impermissibly importing features of
one claim into another.” Appellant’s Br. 18. This argument
fails to persuade us. The phrase “external network outside
the local network” appears only in independent claims 14,
27, 51, 60, and 61, ’890 patent col. 25 l. 26–col. 31 l. 53, and
“we have declined to apply the doctrine of claim differenti-
ation where, as here, the claims are not otherwise identical
in scope,” Indacon, Inc. v. Facebook, Inc., 824 F.3d 1352,
1358 (Fed. Cir. 2016); see also Hormone Research Found.,
Inc. v. Genentech, Inc., 904 F.2d 1558, 1567 n.15 (Fed.
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14 UNILOC 2017 LLC v. APPLE INC.
the PTAB properly construed the terms “external network”
and “local network” as “refer[ring] to networks of differing
geographic scope relative to each other.” Apple, 2018
WL 4210334, at *5.
III. Obviousness
A. Legal Standard
A patent claim is invalid as obvious “if the differences
between the subject matter sought to be patented and the
prior art are such that the subject matter as a whole would
have been obvious at the time the invention was made to a
[PHOSITA].” 35 U.S.C. § 103(a). Obviousness is a question
of law based on underlying findings of fact. See In re Gart-
side, 203 F.3d 1305, 1316 (Fed. Cir. 2000). Those underly-
ing findings of fact include (1) “the scope and content of the
prior art,” (2) the “differences between the prior art and the
claims at issue,” (3) “the level of ordinary skill in the perti-
nent art,” and (4) the presence of objective indicia of non-
obviousness such “as commercial success, long felt but
unsolved needs, failure of others,” and unexpected results.
Graham v. John Deere Co. of Kan. City, 383 U.S. 1, 17
(1966); see United States v. Adams, 383 U.S. 49, 50–52
(1966). In assessing the prior art, the PTAB also “con-
sider[s] whether a PHOSITA would have been motivated
to combine the prior art to achieve the claimed invention
and whether there would have been a reasonable expecta-
tion of success in doing so.” In re Warsaw Orthopedic,
Inc., 832 F.3d 1327, 1333 (Fed. Cir. 2016) (internal quota-
tion marks, brackets, and citation omitted). 7
Cir. 1990) (“It is not unusual that separate claims may de-
fine the invention using different terminology, especially
where (as here) independent claims are involved.”).
7 Congress amended § 103 when it passed the AIA.
Pub. L. No. 112-29, § 3(b)(1), 125 Stat. at 285–87. However,
because neither the ’890 patent nor the application that led
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UNILOC 2017 LLC v. APPLE INC. 15
B. Substantial Evidence Supports the PTAB’s Conclusion
that Malik and Väänänen Render Obvious the
“Transmitting the Selected Recipients” Limitation of
Independent Claims 1, 14, 28, 40, 51, and 62
The PTAB concluded, inter alia, that Malik and
Väänänen render obvious the “transmitting the selected re-
cipients” limitation of independent claims 1, 14, 28, 40, 51,
and 62. Apple, 2018 WL 4210334, at *16–17. Specifically,
the PTAB found that Väänänen discloses “that [a] sub-
scriber terminal sends the contact information of the recip-
ient to the server,” and that “a [PHOSITA] would have
found it obvious to incorporate this teaching into” the voice
message delivery system disclosed by Malik “to indicate
where to deliver the VIM based on the selected recipient
information.” Id. at *16 (internal quotation marks and ci-
tation omitted). Uniloc contends, however, that: (1) the
PTAB “provided no explanation for why it concluded Apple
met its burden to prove” the limitations recited by inde-
pendent claims 14 and 51 invalid, Appellant’s Br. 5; (2) that
Malik does not teach transmitting or routing the selected
recipients and the instant voice message over the local net-
work and the external network, as recited by independent
claims 14, 28, 51, and 62, id. at 5–9; and (3) that Malik
“teaches away” from allowing “the generating/transmitting
client to select and transmit one or more recipients for an
[IVM],” as recited by independent claims 1 and 40, id. at 9.
We disagree with Uniloc.
Substantial evidence supports the PTAB’s conclusion
that the “transmitting the selected recipients” limitation
to the ’890 patent ever contained a claim having an effec-
tive filing date on or after March 16, 2013, or a reference
under 35 U.S.C. §§ 120, 121, or 365(c) to any patent or ap-
plication that ever contained such a claim, ’890 patent, Ti-
tle Page, pre-AIA § 103 applies, see id. § 3(n)(1), 125 Stat.
at 293.
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16 UNILOC 2017 LLC v. APPLE INC.
recited in independent claims 1, 14, 28, 40, 51, and 62
would have been obvious in view of Malik and Väänänen.
First, substantial evidence supports the PTAB’s conclusion
that Malik and Väänänen teach the “transmitting the se-
lected recipients” limitation. Independent claims 1, 14, 28,
40, and 62 all recite a limitation directed to “transmitting
the selected recipients and the instant voice message there-
for[.]” ’890 patent col. 23 ll. 60–61 (claim 1), col. 25 ll. 27–
28 (claim 14), col. 27 ll. 11–13 (claim 28), col. 28 ll. 27–28
(claim 40), col. 32 ll. 13–14 (claim 62). Independent
claim 51 similarly recites a limitation directed to “trans-
mitting the selected external recipients and the instant
voice message therefor[.]” Id. col. 30 ll. 16–17. Väänänen,
in turn, discloses that “[t]he subscriber terminal sends the
contact information of the recipient to the server,”
J.A. 1183, following which “the server relays the message
to the recipient(s) through the Internet or telephony net-
work,” J.A. 1188. Väänänen further discloses that the
“[t]he recipient contact information may comprise the tele-
phone number, static or dynamic IP-address,” among other
information. J.A. 1187. Malik discloses a “voice message
delivery system,” wherein, in a representative embodi-
ment, “the VIM client . . . is configured to receive and play
a voice recording . . . in a [VIM] it receives from other users,
such as a second user.” J.A. 1174. Malik teaches that
“[e]ach VIM client . . . communicates with . . . a VIM
server . . . via the Internet or some other communication
network.” J.A. 1174. “Accordingly, the VIM server . . . in-
cludes the capabilities of conventional IM servers and the
additional capabilities for handling VIM message delivery
and storage.” J.A. 1174. Thus, substantial evidence sup-
ports the PTAB’s conclusion that Väänänen’s method of
sending a recipient’s contact information to a server and
Malik’s voice message delivery system render obvious the
“transmitting the selected recipients” limitation of inde-
pendent claims 1, 14, 28, 40, 51, and 62.
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UNILOC 2017 LLC v. APPLE INC. 17
Second, substantial evidence supports the PTAB’s con-
clusion that a PHOSITA would have been motivated to
combine Malik’s voice message delivery system and
Väänänen’s method of sending a recipient’s contact infor-
mation. Apple, 2018 WL 4210334, at *12. Petitioners’ ex-
pert explained that though “Malik discloses [that a] ‘VIM
client . . . of the second user receives a request or prompt
by the second user to send an [IM] to the first user,’”
J.A. 1072 (citing J.A. 1175), “Malik does not explain in de-
tail . . . how the second user . . . could input information . . .
to designate the first user” as the recipient, and thus “a
PHOSITA would be motivated to seek out ways in which a
user could input information designating a recipient[] . . .
for example, by using the well-known teachings in
Väänänen,” J.A. 1072. The PTAB, considering the testi-
mony of the parties’ respective experts, credited Petition-
ers’ expert, Apple, 2018 WL 4210334, at *11, “and
conclude[d] that a preponderance of the evidence supports
a finding that a [PHOSITA] would have found it obvious to
combine Malik’s system with Väänänen’s disclosed meth-
ods of recipient selection,” id. at 12. “We find no error in
the [PTAB]’s decision to credit the opinion of [Petitioners’]
expert . . . , and we do not reweigh evidence on appeal.” Ap-
ple Inc. v. Voip-Pal.com, Inc., 976 F.3d 1316, 1325 (Fed.
Cir. 2020). Accordingly, substantial evidence supports the
PTAB’s conclusion that a PHOSITA would have been mo-
tivated to combine Malik’s voice message delivery system
and Väänänen’s method of sending a recipient’s contact in-
formation.
Uniloc’s counterarguments are unpersuasive. First,
Uniloc argues that that the PTAB “provided no explanation
for why it concluded [Petitioners] met [their] burden to
prove” the limitations recited by independent claims 14
and 51 invalid, “apart from offering an unexplained cita-
tion to a single page of the Petition and a paragraph” of an
attached declaration. Appellant’s Br. 5–6 (internal quota-
tion marks omitted) (citing J.A. 43); see Appellant’s Br. 5
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18 UNILOC 2017 LLC v. APPLE INC.
(referencing independent claim 14’s limitations “directed to
‘a client connected to a local network, . . . one or more ex-
ternal recipients connected to an external network, [and
the client] transmitting the selected recipients . . . over the
local network and the external network” (citing ’890 pa-
tent, col. 25 ll. 24–29)), 7 (referencing independent
claim 51’s recitation of “transmitting the selected external
recipients and the instant voice message therefor over the
local network and the external network” (citing ’890 pa-
tent, col. 30 ll. 16–18)). Yet again, Uniloc’s statement is
inaccurate. On the page Uniloc cites, the PTAB stated:
“[i]n addition to the reasons discussed above, we specifi-
cally find . . . that Malik and Väänänen render obvious ‘a
client connected to a local network,’” Apple, 2018 WL
4210334, at *17 (citing to the IPR Petition (J.A. 219, 223),
Apple’s Reply (J.A. 391–92), Malik (J.A. 1174, 1176),
Väänänen (J.A. 1196–97), and Petitioners’ expert’s testi-
mony (J.A. 1079–80)); “‘one or more external recipients
connected to an external network,’” id. (citing the IPR pe-
tition (J.A. 223–24), Malik (J.A. 1174), and Petitioners’ ex-
pert’s testimony (J.A. 1083)), “and ‘the client . . .
transmitting the selected recipients and the [IVM] therefor
over the local network and the external network,’” id. (cit-
ing the IPR Petition (J.A. 225) and Petitioners’ expert’s tes-
timony (J.A. 1084–85).
Second, Uniloc argues that Malik does not teach trans-
mitting or routing the selected recipients and the instant
voice message over the local network “and” the external
network, as recited by independent claims 14, 28, 51,
and 62. Appellant’s Br. 5–9 (emphasis added). This argu-
ment is unavailing. Figure 2 of Malik depicts a “prior art
IM network” using a “Jabber” network architecture,
wherein “[e]ach Jabber client . . . is attached to a local Jab-
ber server[.]” J.A. 1173–74. Figure 2 shows “Jabber client
200” connected to “Jabber client 215,” which Malik states
is a “local IM server.” J.A. 1174. Malik states that, in a
preferred embodiment, “VIM client 310” of Figure 3
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UNILOC 2017 LLC v. APPLE INC. 19
“communicates with a VIM server 330 via the Internet, or
some other communication network.” J.A. 1174; see ’890
patent, col. 25 ll. 55–56 (describing “the Internet” as an “ex-
ternal network”); J.A. 1083 (Petitioners’ expert testifying
that “Malik explicitly teaches using the Internet, which is
a type of external network.”). Petitioners’ expert also tes-
tified that a PHOSITA “would have found it obvious to in-
corporate [Figure] 3’s Internet into [Figure] 2, such that a
server in [Figure] 2 could connect to its clients via the In-
ternet.” J.A. 1084. Accordingly, substantial evidence sup-
ports the PTAB’s finding that “a [PHOSITA] would have
found it obvious to implement, using known methods, the
connections of Malik’s Figure 2 using a combination of local
and external networks[.]” Apple, 2018 WL 4210334, at *15
(emphasis added).
Third, Uniloc argues that “[t]he [PTAB] erred in not
recognizing” that Malik “teaches away” from allowing “the
generating/transmitting client to select and transmit one
or more recipients for an [IVM].” Appellant’s Br. 9; see
Ricoh Co. v. Quanta Computer Inc., 550 F.3d 1325, 1332
(Fed. Cir. 2008) (“A reference may be said to teach away
when a [PHOSITA], upon reading the reference, would be
discouraged from following the path set out in the refer-
ence, or would be led in a direction divergent from the path
that was taken by the applicant.” (internal quotation
marks and citation omitted)). Uniloc contends that, be-
cause Malik discloses a system “designed to exchange a
VIM responsively to a VIM invitation,” Appellant’s Br. 9–
10 (internal quotation marks omitted), “the Malik system,
by design, leaves control in the hands of the (receiving) first
user” who sends the invitation, and not the transmitting
“second user,” id. at 11. This argument is without merit.
Malik discusses “accepting a VIM invitation” when describ-
ing Figure 3, “one representative embodiment, among oth-
ers, of a voice message delivery system[.]” J.A. 1174.
“[The] mere disclosure of alternative designs” in the prior
art “does not teach away.” In re Fulton, 391 F.3d 1195,
Case: 19-1197 Document: 76 Page: 20 Filed: 02/11/2021
20 UNILOC 2017 LLC v. APPLE INC.
1201 (Fed. Cir. 2004). Accordingly, substantial evidence
supports the PTAB’s finding that Malik and Väänänen ren-
dered obvious the “transmitting the selected recipients”
limitation recited in independent claims 1, 14, 28, 40, 51,
and 62. 8
CONCLUSION
We have considered the parties’ remaining arguments
and find them unpersuasive. Accordingly, the Final Writ-
ten Decision of the U.S. Patent and Trademark Office’s Pa-
tent Trial and Appeal Board is
AFFIRMED
8 Uniloc’s argument that Malik “does not teach that
its sending and receiving clients use different types of net-
works for its voice messaging,” is predicated on us adopting
Uniloc’s construction of “external network” and “local net-
work.” Appellant’s Br. 21 (arguing that, “[i]n applying its
erroneous claim construction, the [PTAB] failed to recog-
nize a dispositive distinction between” Malik “and the var-
ious claim limitations directed to different types of
networks recited as a ‘local network’ and an ‘external net-
work’”). Because we do not adopt Uniloc’s construction, we
need not address Uniloc’s conditional argument. See
Knowles Elecs. LLC v. Iancu, 886 F.3d 1369, 1373 n.3 (Fed.
Cir. 2018) (“Because we conclude that the PTAB did not err
in its construction of the disputed limitation, we need not
address the appellant’s conditional arguments as to the
PTAB’s unpatentability determinations.” (internal quota-
tion marks, brackets, and citation omitted)).