Xerox Corp. v. Snap Inc.

• Court: Court of Appeals for the Federal Circuit
• Decided: April 17, 2025
• Docket: 23-1967
• Status: Unpublished

Opinion

Case: 23-1967 Document: 50 Page: 1 Filed: 04/17/2025

NOTE: This disposition is nonprecedential.

United States Court of Appeals for the Federal Circuit ______________________

XEROX CORP., Appellant

v.

SNAP INC., Appellee ______________________

2023-1967 ______________________

Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. IPR2021- 00986. ______________________

Decided: April 17, 2025 ______________________

ALEXANDRA FIGARI EASLEY, McKool Smith, P.C., Dal- las, TX, argued for appellant. Also represented by DAVID SOCHIA; KEVIN L. BURGESS, Marshall, TX; JAMES ELROY QUIGLEY, Austin, TX.

YAR R. CHAIKOVSKY, White & Case LLP, Palo Alto, CA, argued for appellee. Also represented by DAVID OKANO; NAVEEN MODI, JOSEPH PALYS, Paul Hastings LLP, Wash- ington, DC. ______________________ Case: 23-1967 Document: 50 Page: 2 Filed: 04/17/2025

Before MOORE, Chief Judge, PROST and STARK, Circuit Judges. Opinion for the court filed by Chief Judge MOORE. Circuit Judge STARK joins Part II of this opinion. MOORE, Chief Judge. Xerox Corporation (Xerox) appeals a final written deci- sion of the Patent Trial and Appeal Board (Board) holding claims 1–20 of U.S. Patent No. 9,208,439 unpatentable. We affirm. BACKGROUND Xerox owns the ’439 patent, which is directed to a method for receiving information about a user’s surround- ings from a mobile device, modifying stored information, and sending a notification of a change in that information to apps that recommend items or activities for the user. ’439 patent at 1:7–12, 3:23–25, 9:13–29. Claim 1 is repre- sentative: 1. A method, comprising: [a] receiving, from a mobile device, event data de- rived from contextual data collected using detec- tors that detect a physical context surrounding the mobile device; [b] modifying a context graph that stores facts and assertions about a user’s behavior and interests us- ing the event data; [c] in response to determining that there exists a registration for notification of changes that matches the modification to the context graph, sending a notification of context graph change to a recommender. Id. at 10:30–40 (emphases added). Case: 23-1967 Document: 50 Page: 3 Filed: 04/17/2025

XEROX CORP. v. SNAP INC. 3

Snap, Inc. (Snap) challenged claims 1–20 of the ’439 patent as obvious over U.S. Patent No. 9,015,099 (Nitz) in view of U.S. Patent No. 6,714,778 (Nykänen). J.A. 100–01. The Board held all challenged claims would have been obvious based on the combination of Nitz and Nykänen. J.A. 1–77. Xerox appeals. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(4)(A). DISCUSSION I. Claim Construction Claim construction is a question of law that may be based on underlying factual findings. Kamstrup A/S v. Ax- ioma Metering UAB, 43 F.4th 1374, 1381 (Fed. Cir. 2022). We review the Board’s claim constructions de novo and any underlying findings for substantial evidence. Id. The Board concluded “context graph” does not require “the graph to store information about a user in the form of nodes and edges” and is not “limiting as to the particular way in which facts and assertions about a user are stored in the model.” J.A. 15. Xerox argues the Board erred by construing “context graph” to not require any graph-based properties, such as nodes and edges. Appellant Br. 24–39. We agree. The plain language of claim 1 requires a “context graph.” And claim 20 clarifies claim 1’s “context graph” has graph-based properties, such as “nodes and edges.” ’439 patent at 12:52–55 (“The method of claim 1, wherein send- ing the notification comprises notifying the recommender of . . . changes to individual properties of nodes and edges in the context graph.”). Snap argues the Board’s construc- tion is correct because claim 20 is tied to a specific embod- iment of “context graph” that has graph-based properties. Appellee Br. 42–45. We do not agree. Claim 20 does not limit claim 1’s “context graph” to have graph-based proper- ties because such properties are already inherent in claim 1’s “context graph.” Rather, claim 20 limits claim Case: 23-1967 Document: 50 Page: 4 Filed: 04/17/2025

1[c]’s “sending a notification of context graph change” ele- ment by requiring the notification includes certain changes to the context graph (i.e., changes to nodes and edges, which are properties of a context graph). The Board concluded “context graph” does not require a graph-based model by relying, in part, on the specifica- tion’s statement: “[a] context graph is an in-memory model that stores facts and assertions about a user’s behavior and interests.” J.A. 14 (quoting ’439 patent at 3:20–22). Snap argues that statement is lexicography, which defines “con- text graph” to encompass non-graphical models. Appellee Br. 39–40. We do not agree. A patentee can, of course, change the plain and ordinary meaning of a term through lexicography. See, e.g., Thorner v. Sony Computer Ent. Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). But when it does so, it must do so clearly and unmistakably. Luminara Worldwide, LLC v. Liown Elecs. Co., 814 F.3d 1343, 1353 (Fed. Cir. 2016). Throughout the claims and the written description, the patentee repeatedly indicates that “context graph” is a graph-based model. First, it is inherent in the term itself which repeatedly and consistently includes the word graph. Second, the specification describes context graph as a “graph.” ’439 patent at 2:63–67 (“The server-side archi- tecture stores the contextual data and uses the contextual data to modify a graph containing user behavior and inter- est information. Applications may use information from the graph to modify application-specific user models and generate recommendations.” (emphases added)), 9:28–31 (“When the graph changes, the system can send the new graph data to relevant recommenders. The recommenders can then form recommendations using the new graph data.” (emphases added)). Further, the specification ex- plains: “Context graph 406 is a per-user, in-memory, graph-based model that stores facts and assertions about user behavior and actions.” Id. at 7:26–28 (emphasis added). After this qualification, the specification explains Case: 23-1967 Document: 50 Page: 5 Filed: 04/17/2025

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that this “graph-based model” may store data “using a type-less approach to data storage” and “according to dif- ferent data models, including data models for entity-rela- tionship data and unstructured data.” Id. at 7:36–40. Those are examples of how the underlying data in the con- text graph can be stored in the nodes and edges; they do not mean context graph is no longer a graph-based model. The statement in the specification which Snap relies upon for lexicography where the patentee defines the con- text graph as not limited to a graph-based model is: “[a] context graph is an in-memory model that stores facts and assertions about a user’s behavior and interests.” J.A. 14 (quoting ’439 patent at 3:20–22). We do not agree. This is no more than a general descriptive statement which is com- pletely accurate without being definitional. A context graph is undisputedly an in-memory model. A graph-based model is one form of an in-memory model. A context graph is also one which stores facts and assertions about a user’s behavior and interests. Nothing about this sentence, which continues to employ the word “graph,” broadens “context graph” to in-memory models that are not graph- based. This is merely a statement of intended purpose for the graph-based memory model. Compare the following:

A context graph A bicycle

is an in-memory model is a vehicle

that stores facts and asser- that a user can ride to get tions about a user’s behav- from place to place. ior and interests.

The bicycle has not been redefined to now include a trac- tor/car/motorcycle/plane/boat/canoe (all of which are vehi- cles that a user can ride to get from place to place). Likewise, stating that a context graph is an in-memory model does not transform it into any kind of in-memory Case: 23-1967 Document: 50 Page: 6 Filed: 04/17/2025

model. Even the Board acknowledged the need for “context graph” to have graph-based properties, such as “nodes” and “edges.” J.A. 16 (citing J.A. 414–15 n.2 (Snap’s Reply)). The Board further relied on the prosecution history, in which the applicant distinguished a prior-art reference based on the type of data stored rather than the form in which the data was stored. J.A. 16 (citing J.A. 1060). The reference disclosed a “factor graph” that also stored data in nodes and edges. J.A. 1059–60. The reference was not, therefore, being distinguished based on the form in which the data was stored, i.e., graph. We conclude that the proper construction of context graph is one which requires graph-based properties, such as nodes and edges. II. Obviousness We review the Board’s ultimate determination of obvi- ousness de novo and its underlying factual findings for sub- stantial evidence. Pers. Web Techs., LLC v. Apple, Inc., 848 F.3d 987, 991 (Fed. Cir. 2017). What a reference teaches and whether a skilled artisan would be motivated to com- bine references are questions of fact. In re Constr. Equip. Co., 665 F.3d 1254, 1255 (Fed. Cir. 2011). A. Claim 1[b] The Board found Nitz discloses claim 1[b] under its construction of “context graph.” J.A. 26. In the alternative, the Board found Nitz, combined with teachings of its incor- porated references like Donneau-Golencer, 1 discloses claim 1[b] even if “context graph” has graph-based proper- ties. J.A. 26–27. Xerox argues the Board never explained how or why Nitz and Donneau-Golencer would be combined

1 U.S. Patent Application No. 13/287,985, filed on Nov. 2, 2011, later issued as U.S. Patent No. 9,245,010. Case: 23-1967 Document: 50 Page: 7 Filed: 04/17/2025

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to disclose a “context graph” under the Board’s alternative finding. Appellant Br. 41–44. We do not agree. Substantial evidence supports the Board’s alternative finding that Nitz, combined with teachings of Donneau-Go- lencer, discloses claim 1[b], including a “context graph” with graph-based properties. The Board found that “Nitz specifically points to these references as describing ways to organize and conceptualize real-time information about a user” and then cited Donneau-Golencer Figure 8, which de- picts a graph structure similar to “context graph 406” de- picted in Figure 4 of the ’439 patent. J.A. 27; J.A. 1108 (Nitz) at 12:42–48 (“Some examples of methods and tech- niques for extracting pertinent information from unstruc- tured data, tagging the unstructured data with semantic information, and drawing inferences from the information are described in Donneau-Golencer . . . which is incorpo- rated herein by this reference in its entirety.”); J.A. 1297 (Donneau-Golencer) at Fig. 8. That is sufficient for sub- stantial evidence. In re Jolley, 308 F.3d 1317, 1320 (Fed. Cir. 2002). B. Claim 1[c] The Board found a combination of Nitz and Nykänen discloses claim 1[c]. J.A. 33–34. Xerox argues Nykänen’s registration system is for access to the user’s data, so there is no need for claim 1[c]’s “notification” or “matches” ele- ments because the system simply grants access to the ac- tual data. Appellant Br. 44–49. We do not agree. Substantial evidence supports the Board’s finding. The Board found “Nykänen teaches that there is no need to transfer information from a knowledge base (‘context graph’) if there is no relevant event or change in the context of the mobile device.” J.A. 33. The Board also found a skilled artisan “would have understood Nykänen’s teach- ing that the registration is for changes to ‘specific context information,’ and Nykänen’s teachings as a whole, to indi- cate that the notification is for changes that match a Case: 23-1967 Document: 50 Page: 8 Filed: 04/17/2025

specific subset of context information that the application is registered.” Id. The Board relied on Snap’s opening ex- pert declaration, which accompanied Snap’s petition and cited to Nykänen, and Snap’s reply expert declaration, which responded directly to Xerox’s arguments and cited additional portions of Nykänen regarding the same figure and embodiment relied on in the opening declaration. J.A. 33–34 (citing J.A. 884–85, 888–91 ¶¶ 103, 108, 109, 111 (Op. Decl.); J.A. 2062–66 ¶¶ 116, 119 (Reply Decl.)). That is sufficient for substantial evidence. Jolley, 308 F.3d at 1320. C. Motivation to Combine The Board found a skilled artisan would have been mo- tivated to combine Nitz with Nykänen to increase the effi- ciency of Nitz’s system. J.A. 32–33. Xerox argues a skilled artisan would not look to Nykänen because its system has an additional authorization layer to protect data privacy on mobile devices, which decreases efficiency. Appellant Br. 50–54 (citing J.A. 1127–31 (Nykänen) at 2:35–38, 6:35–41, 9:40–46). Substantial evidence supports the Board’s finding. The Board found Nitz’s system is inefficient because it pushes all data, changed or unchanged, to the recommender and Nitz itself recognizes a recommender does not need access to all data. J.A. 32–33. The Board also found Nykänen teaches there is no need to transfer data if there is no rele- vant change in the context. J.A. 33. The Board relied on Snap’s opening expert declaration, which cited Nitz and Nykänen. J.A. 32–33 (citing J.A. 884–88 ¶¶ 103, 105, 107). Xerox’s argument amounts to “contrary evidence [that] is insufficient to overcome substantial evidence review.” Restem, LLC v. Jadi Cell, LLC, 130 F.4th 941, 947 (Fed. Cir. 2025). Case: 23-1967 Document: 50 Page: 9 Filed: 04/17/2025

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CONCLUSION We have considered the parties’ remaining arguments and find them unpersuasive. For the foregoing reasons, we affirm the Board’s decision. AFFIRMED COSTS No costs.