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NOTE: This disposition is nonprecedential.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. Case: 19-1197 Document: 76 Page: 2 Filed: 02/11/2021
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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. Case: 19-1197 Document: 76 Page: 3 Filed: 02/11/2021
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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 Case: 19-1197 Document: 76 Page: 4 Filed: 02/11/2021
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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: Case: 19-1197 Document: 76 Page: 5 Filed: 02/11/2021
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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: Case: 19-1197 Document: 76 Page: 6 Filed: 02/11/2021
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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. Case: 19-1197 Document: 76 Page: 7 Filed: 02/11/2021
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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 Case: 19-1197 Document: 76 Page: 8 Filed: 02/11/2021
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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 Case: 19-1197 Document: 76 Page: 9 Filed: 02/11/2021
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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). Case: 19-1197 Document: 76 Page: 10 Filed: 02/11/2021
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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 Case: 19-1197 Document: 76 Page: 11 Filed: 02/11/2021
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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 Case: 19-1197 Document: 76 Page: 12 Filed: 02/11/2021
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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”). Case: 19-1197 Document: 76 Page: 13 Filed: 02/11/2021
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“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. Case: 19-1197 Document: 76 Page: 14 Filed: 02/11/2021
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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 Case: 19-1197 Document: 76 Page: 15 Filed: 02/11/2021
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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. Case: 19-1197 Document: 76 Page: 16 Filed: 02/11/2021
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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. Case: 19-1197 Document: 76 Page: 17 Filed: 02/11/2021
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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 Case: 19-1197 Document: 76 Page: 18 Filed: 02/11/2021
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(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 Case: 19-1197 Document: 76 Page: 19 Filed: 02/11/2021
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“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
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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)).