UNILOC 2017 LLC, Appellant v. FACEBOOK INC., WHATSAPP, INC., Appellees
19-1688, 2019-1688, 2019-1689
United States Court of Appeals for the Federal Circuit
March 9, 2021
Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in Nos. IPR2017-01427, IPR2017-02087, IPR2017-01428, IPR2017-02088.
Decided: March 9, 2021
JEFFREY A. STEPHENS, Etheridge Law Group, Southlake, TX, argued for appellant. Also represented by JAMES ETHERIDGE, RYAN S. LOVELESS, BRETT MANGRUM.
PHILLIP EDWARD MORTON, Cooley LLP, Washington, DC, argued for appellees. Also represented by HEIDI LYN KEEFE, ANDREW CARTER MACE, LOWELL D. MEAD, MARK R. WEINSTEIN, Palo Alto, CA.
Before LOURIE, WALLACH, and CHEN, Circuit Judges.
Uniloc 2017 LLC (Uniloc) appeals from two consolidated inter partes review (IPR) decisions of the Patent Trial and Appeal Board (Board) finding unpatentable claims 1-8 and claims 9-12, 14-17, 25 and 26 of U.S. Patent No. 8,995,433 (‘433 patent) as obvious.
Foremost at issue in this case is whether
BACKGROUND
A
Uniloc is the owner of the ‘433 patent, which is directed to “a system and method for enabling local and global instant [Voice over Internet Protocol (VoIP)] messaging over an IP network.” ‘433 patent col. 1 ll. 21-23. The patent describes the implementation of two modes: “record mode” and “intercom mode.” Id. at col. 7 ll. 61-65. In record mode, the user‘s speech is recorded into an audio file, and upon finalization, the user sends a signal to the server that the message is ready to be sent. Id. at col. 8 ll. 9-22. The message is then sent to the server and the server delivers the message to the selected recipient. Id. at col. 8 ll. 25-43. However, if the recipient is not currently available, i.e., disconnected, the server temporarily saves the instant voice message and delivers it to the recipient when the recipient connects to its local server, i.e., becomes available. Id. The intercom mode operates similarly, but it allows for the instant voice message to be transmitted in real-time to the selected
Claims 1 and 9 are the independent claims at issue here.1 They state, in pertinent part, as follows:
1. A system comprising:
an instant voice messaging application including a client platform system for generating an instant voice message and a messaging system for transmitting the instant voice message over a packet-switched network via network interface;
...
wherein the instant voice messaging application includes a message database storing the instant voice message, wherein the instant voice message is represented by a database record including a unique identifier; and
wherein the instant voice messaging application includes a file manager system performing at least one of storing, deleting and retrieving the instant voice messages from the message database in response to a user request.
9. A system, comprising:
an instant voice messaging application comprising:
a client platform system ... ;
a messaging system ..., and
wherein the instant voice message application attaches one or more files to the instant voice message.
‘433 patent at claims 1, 9 (emphases added).
B
Facebook filed two petitions for inter partes review of the ‘433 patent on May 11, 2017. In the first petition (‘1427 IPR Pet.), Facebook challenged claims 1-8 as obvious under
Meanwhile, a different IPR proceeding challenging claims of the ‘433 patent, IPR2017-00225, was already pending at the Board, petitioned for by Apple Inc. (Apple). On June 16, 2017, after it had filed the ‘1427 IPR Pet. and ‘1428 IPR Pet., Facebook filed a new petition, identical in substance to Apple‘s IPR petition, challenging claims 1-6 and 8 of the ‘433 patent and a motion to join the Apple IPR. In response, the Board instituted this IPR and granted Facebook‘s motion to join Apple‘s IPR on October 3, 2017.
Aside from Apple and Facebook, yet another party was interested in invalidating certain claims of the ‘433 patent—LG. Before a decision issued on whether to institute Facebook‘s IPR petitions, on September 11, 2017, LG filed IPR petitions
The Board then, on December 4, 2017, instituted inter partes review for Facebook‘s ‘1427 and ‘1428 IPR petitions.7 Given that Facebook was now a party to multiple different IPR proceedings challenging claims of the ‘433 patent, the Board foresaw the possibility of a statutory estoppel issue arising under
In its
The Board subsequently instituted IPRs based on LG‘s petitions and then granted LG‘s motion to join the ‘1427 IPR and ‘1428 IPR on March 6, 2018. J.A. 655. Uniloc then filed its Patent Owner Responses to the original Facebook IPR petitions on March 23, 2018. In its ‘1427 IPR response, inter alia, Uniloc contended that LG should be barred from maintaining the ‘1427 IPR once the Board issues a final written decision in the Apple IPR because LG is estopped as a real party in interest (RPI) or privy to Facebook. See, e.g., J.A. 685.
Two months later, on May 23, 2018, the Board issued a final written decision in the Apple IPR upholding the patentability of all challenged claims. Six days later, on May 29, 2018, the Board issued a decision in the ‘1427 IPR dismissing-in-part Facebook from the IPR, finding that Facebook was “estopped from maintaining the instant proceeding under
C
The Board issued its final written decision in the consolidated IPRs on November 20, 2018. The Board concluded that all of the challenged claims are unpatentable. Facebook, Inc. v. Uniloc 2017 LLC, Nos. IPR2017-01427, IPR2017-01428, 2018 WL 6271687, at *33 (P.T.A.B. Nov. 30, 2018). The Board found that claims 1-6 and 8 of the ‘433 patent would have been obvious over Zydney in view of Clark, with Zydney teaching all but the “message database” and Clark supplying this missing limitation. Id. at *14, *22, *24. Likewise, the Board concluded that claim 7 is unpatentable as obvious under a similar combination of Zydney, Clark, and Appelman. Id. at *24. The Board also concluded that claims 9-12, 14-17, 25, and 26 are unpatentable as obvious, with Zydney again as the primary reference. Id. at *27, *29, *31-33. Relevant to this appeal, the Board explained that Zydney teaches the “attaches one or more files to the instant voice message” limitation of the challenged claims. Id. at *25. In reaching this conclusion, the Board reasoned that “attach” as used in the claims referred to creating an association between the files and the instant voice message, id. at *7, the instant voice message in this phrase construed as “data content including a representation of an audio message,” id.
Uniloc sought rehearing before the Board following this final written decision. Uniloc‘s principal contention in seeking rehearing in the ‘1427 IPR was that the proceeding as a whole should have been terminated once the original petitioner, Facebook, was deemed estopped, because “[j]oined parties are privy to a petitioner.” J.A. 907. Uniloc argued that rehearing was warranted in the ‘1428 IPR because it was denied proper notice in violation of due process. This was because, Uniloc contended, “[t]he Board sua sponte provided a definition of the term ‘attaches’ that was not advanced by” the parties or supported by the record. J.A. 2313. The Board denied both rehearing requests. J.A. 105, 210.
Uniloc appeals both final decisions to our court.8 We have jurisdiction pursuant to
DISCUSSION
Uniloc raises four main disputes on appeal: (1) the Board erred in finding that LG is not estopped from challenging claims 1-8 in view of its purported relationship with Facebook as an RPI or privy; (2) the Board erred in finding that Facebook is not estopped from challenging claim 7; (3) the Board erred in its unpatentability determination of claims 1-8 because the cited references do not teach the “instant voice message application” of the claims; and (4) the Board erred in its unpatentability determination of claims 9-12, 14-17, 25, and 26 because the cited references do not teach the claimed “attaches ... to” limitation. We address each argument in turn.
A
Before we address the merits of Uniloc‘s estoppel argument against LG, we consider as an initial matter whether we may review this particular challenge. As we have seen since the onset of IPRs,
Uniloc‘s challenge attacks the Board‘s finding that LG is not an RPI or privy of Facebook and thus not estopped from challenging claims 1-6 and 89 of the ‘433 patent under
Subsection 314(d) dictates that “[t]he determination by the Director [of the Patent Office] whether to institute an inter partes review under this section shall be final and nonappealable.” The Supreme Court in Cuozzo interpreted this provision as overcoming the strong presumption in favor of judicial review “where the grounds for attacking the decision to institute inter partes review consist of questions that are closely tied to the application and interpretation of statutes related to the Patent Office‘s decision to initiate inter partes review.” Cuozzo, 136 S. Ct. at 2141. In Cuozzo, the Court held that judicial review was precluded by
The Supreme Court has since addressed the judicial review bar under
This court has considered additional types of Board decisions in which the statutory bar of
On the other hand, in Credit Acceptance Corp. v. Westlake Services, 859 F.3d 1044 (Fed. Cir. 2017), we held that judicial review of a challenge to the Board‘s application of the estoppel provision of
More recently, we held the inverse scenario of that in Medtronic is likewise not reviewable. That is, a challenge “that the Board failed to comply with [the RPI requirement of] § 312(a)(2)” and should have terminated the proceeding is merely “a contention that the agency should have refused to institute an inter partes review,” and therefore not reviewable by this court in view of
With that background, we turn now to the question in this case of whether we may review the Board‘s decision that LG is not estopped from maintaining its challenge against claims 1-6 and 8. Considering
As the Supreme Court elucidated in Northcross v. Board of Education of Memphis City Schools, 412 U.S. 427, 428 (1973) (per curiam), when one statute “tracks the wording of” another, this is a “strong indication that the two statutes should be interpreted pari passu,” particularly if the two provisions share a common purpose. Id. (interpreting the language of the Emergency School Aid Act of 1972 to allow for the ordinary award of attorneys’ fees because the relevant provision of the Act “tracks the wording” of the similarly focused Civil Rights Act of 1964, which the Court had previously interpreted as providing for such ordinary award). Thus, just as we concluded for the CBM estoppel provision of
Critically, the particular circumstances in Credit Acceptance, i.e., one in which no cause for termination at the time of petition existed and the basis for termination developed while the proceeding was ongoing, is exactly that which happened here. When the Board instituted review in the ‘1427 IPR, no estoppel could apply because no final written decision had been reached in the Apple IPR. Though the Board‘s institution decision ordered supplemental briefing regarding the potential, future applicability of
Finding Uniloc‘s estoppel challenge as to LG reviewable, we now consider the merits of that challenge. “Determining whether a [] party is a[n] [RPI] demands a flexible approach that takes
Uniloc asserts that LG is an RPI or privy of Facebook because it “agreed to be bound by the determination of issues in the [‘1427 IPR] proceeding below” and “exerted control over substantive filings and oral argument in the [‘1427 IPR] proceeding below.” Appellant‘s Br. at 20. The Board agreed with LG that the evidence was simply insufficient to establish a key consideration of the RPI analysis—control. The Board further considered the nature of the relationship between the parties for privity based on the prior inter partes proceeding, i.e., the Apple IPR, and found that nothing in the record supported the conclusion that the two parties are “sufficiently close such that both should be bound by the trial outcome and related estoppels.” J.A. 104 (quoting WesternGeco, 889 F.3d at 1317-22).
The Board‘s determination that LG is not an RPI or privy of Facebook is supported by substantial evidence. Uniloc‘s somewhat conclusory arguments never attempt to differentiate its position as to RPI and privity, instead simply asserting that LG must be one or the other. But just because LG expressed an interest in challenging the ‘433 patent‘s patentability, through its filing of its own IPR petition and joinder motion, does not by itself make LG an RPI to Facebook‘s IPR. The record lacks any evidence that LG exercised any control over Facebook‘s decision to file for inter partes review (either in the Apple IPR and in this IPR) or Facebook‘s arguments made during the proceedings, and vice versa. Moreover, nothing in the record suggests that Facebook recruited LG to join as a party to the Facebook IPR, thereby making LG an agent advancing Facebook‘s interests. That is, we see no
The record likewise does not present evidence that LG and Facebook, beyond their relationship as joined parties in this proceeding, have any sort of “preexisting, established relationship” that indicates coordination amongst the two regarding the Apple IPR. See Applications in Internet Time, 897 F.3d at 1351. Without such evidence of control, in addition to no evidence of joint funding, or even any evidence of substantial coordination between the parties as to their respective decisions to bring these proceedings, a finding that LG is an RPI of or in privity with Facebook here would be improper. See WesternGeco, 889 F.3d at 1320-21 (explaining, in finding no privity, that the evidence demonstrated the parties were represented by different counsel, had no control over each other, had no collective funding, and lacked substantive involvement with each other). The mere fact that the Board procedurally required LG and Facebook to consolidate their arguments and evidence in combined filings in this proceeding does not, without more, make them privies of each other such that one petitioner automatically loses its rights to assert its challenge once the other petitioner loses its rights through estoppel.
We decline, as the Board too did, to conclude that LG is estopped as result of Facebook‘s participation in the Apple IPR, merely by way of its joinder as a party in this later proceeding. Uniloc suggests that the Board, in reaching this conclusion, failed to address its arguments regarding Kofax, Inc. v. Uniloc USA, Inc., No. IPR2015-01207, 2016 WL 8944779 (P.T.A.B. July 20, 2016).13 Appellant‘s Br. at 21-23. Uniloc asserts that Kofax held that “co-petitioners” are automatically RPIs or privies of one another, but this misunderstands that decision. Kofax, which is non-binding on this court, determined that co-petitioners Ubisoft and Zebra in an IPR proceeding were RPIs of one another because Ubisoft had named Zebra as an RPI in its filings to the Board, due to a preexisting relationship between them. Id. at *1-2. Thus, once Ubisoft was estopped from maintaining the IPR by its role as a petitioner in an earlier, different IPR, Zebra, as an undisputed RPI, was also estopped. Id. This situation is not the same as that here because Facebook did not list LG as an
In view of the foregoing, substantial evidence supports the finding that LG acted of its own accord in the ‘1427 IPR for claims 1-6 and 8 and is not estopped from maintaining its patentability challenge in this proceeding.
B
Uniloc, second, challenges the Board‘s estoppel determination for Facebook. Specifically, Uniloc asserts that Facebook is estopped from challenging claim 7 of the ‘433 patent because the Board found Facebook estopped from challenging the same claims the Board adjudicated in the Apple IPR, claims 1-6 and 8. Appellant‘s Br. at 25-26. This estoppel should also apply to claim 7 because, Uniloc argues, claim 7 depends from claim 1 and the Board, by allowing such a challenge on claim 7, essentially allowed Facebook to continue to attack claim 1, which is broader in scope than claim 7. Id. at 26-27. Uniloc notes, moreover, that “[t]he Board‘s partial dismissal [of Facebook for estoppel on claims 1-6 and 8] essentially resulted in an impermissible partial institution” in violation of SAS Institute. Id. at 25.
As a threshold matter, for the reasons set forth above, the Board‘s determination that Facebook was not estopped here from maintaining its challenge to claim 7 is subject to judicial review because it was a separate and later determination not closely tied to institution and therefore not barred by
Despite Uniloc‘s contentions, we see no error in the Board‘s determination that the Apple IPR final written decision, which did not address claim 7, does not estop Facebook from maintaining its challenge in this proceeding to claim 7. Section 315 explicitly limits the estoppel to the claims previously challenged and for those proceedings that resulted in a final written decision:
The petitioner in an inter partes review of a claim in a patent under this chapter that results in a final written decision under section 318(a) . . . may not request or maintain a proceeding before the Office with respect to that claim on any ground that the petitioner raised or reasonably could have raised during that inter partes review.
Uniloc relies on SAS Institute as suggesting that the Board‘s partial dismissal of Facebook results in an improper partial institution. Appellant‘s Br. at 25. We disagree. SAS Institute rejected the Board‘s decision there to grant only “partial institution” of a petition for inter partes review because such a practice was inconsistent with
C
Uniloc‘s third and fourth challenges on appeal both relate to the Board‘s obviousness determinations. “Whether a claimed invention is unpatentable as obvious under
As to claims 1-8, Uniloc argues that the combination of Zydney and Clark does not teach the claimed “instant voice messaging application” because the claims require that the “message database” be embedded into the software agent itself, i.e., Clark‘s message database must be embedded into Zydney‘s software agent, not just Zydney‘s system. Appellant‘s Br. at 32.
The Board‘s finding in this respect is supported by substantial evidence. Uniloc suggests that the Board impermissibly strayed from the petition in reaching its finding, but the petition noted that Clark explicitly teaches incorporating its message database into messaging client software, which corresponds to Zydney‘s software agent, see J.A. 478-81. Specifically, Clark explains that its “invention can advantageously be integrated with messaging client software and/or messaging server software, such as e-mail software, to facilitate the organization of electronic messages.” Clark col. 4 ll. 36-39 (emphases added). Clark also teaches elsewhere that its message database would be incorporated into the client computer in its software. See id. at col. 10 ll. 27-33, 47-52 and figs. 4A, 4B, and 4C. Furthermore, the Board credited the testimony of petitioner‘s expert, Dr. Lavian, who testified that Clark‘s stated goal of organization of electronic messages would have provided motivation for a skilled artisan to combine the message database of Clark into Zydney‘s software. See Facebook, 2018 WL 6271687, at *15 (citing Dr. Lavian‘s declaration). We conclude therefore that Uniloc‘s argument is without merit and that substantial evidence supports the Board‘s finding that the references teach the “instant voice messaging application” limitation of the challenged claims.
D
Uniloc‘s final argument is that the Board erred in concluding that claims 9-12,
Uniloc‘s broader argument appears largely to hinge on the construction of the “attaches one or more files to the instant voice message” and “instant voice message” terms. Claim construction is a legal issue reviewed de novo, based on underlying factual findings that are reviewed for substantial evidence. Personal Web Techs., LLC v. Apple, Inc., 848 F.3d 987, 990 (Fed. Cir. 2017). The Board adopted Uniloc‘s proposed construction, construing “instant voice message” to mean “data content including representation of an audio message.” Facebook, 2018 WL 6271687, at *5. Neither party disputes this construction on appeal.
Uniloc does, however, take issue with the Board‘s construction of “attaches one or more files to the [data content including representation of an audio message]” limitation, suggesting that the Board‘s interpretation of the “attaches to” limitation is inconsistent with its interpretation of “instant voice message.” The Board construed this “attaches to” limitation to mean “indicating that another file (or files) is associated with the ‘instant voice message.‘” Id. at *8.14 Uniloc contends that the “attaches to” term requires more than a mere association with the audio file; it requires that the attachments be directly appended to the audio file itself, not just to the container for this file. Appellant‘s Br. at 42. This is because, it argues, the instant voice message, as construed by the Board, is equivalent to the audio file, not a container including the audio file. We agree with the Board.
The claims and written description support the Board‘s construction of the “attaches to” limitation as requiring association with the instant voice message container. The written description explains that the attachment of a file can be completed through a “drag-and-drop” method creating “linkages” between the files and the instant voice message. See ‘433 patent col. 13 ll. 35-40. Further, claim 14, which depends from claim 9, similarly recites that the attaching function is accomplished through a “link” between the instant voice message and the files. Considering the intrinsic evidence and the broadest reasonable interpretation standard, the Board‘s broader construction of “attaching to” is the best reading of the limitation as used in the ‘433 patent. Uniloc fails to point to specific teachings in the ‘433 patent that demonstrate that a narrower construction
As to Uniloc‘s argument that it was denied proper notice of the construction of this term, we, again, respectfully disagree. Filings from as early as the ‘1428 IPR Pet. included assertions that Zydney disclosed the “attaches to” limitation by attaching the files to the “voice container,” see, e.g., J.A. 1902-06. During the IPR, Uniloc itself made assertions that the “attaches to” claim language required the attaching to be directly to the audio file. See J.A. 883. This term was also discussed in detail at the hearing before the Board. See, e.g., J.A. 2231-32 (Hearing Transcript). We determine, consequently, that Uniloc was afforded sufficient opportunity and notice to address the construction of this term.
Given the construction of the “attaches to” term, the Board‘s finding that Zydney discloses this limitation is supported by substantial evidence. Just as the Board noted, “Zydney . . . accomplishes ‘attachments’ in the same manner as the ‘433 patent, by making an association between the instant voice message and the file attachment.” Facebook, 2018 WL 6271687, at *25. The Board pointed to Figure 6 of Zydney as disclosing this associating between the attachment and the voice container. Id. The Board also credited the testimony of the petitioner‘s expert “that a person of ordinary skill in the art would have found it obvious that attaching files to a voice container would have been part of the process [in Zydney] of packing the message into a voice container.” Id. Facebook explains, and Uniloc agrees, see Appellant‘s Br. at 50 (citing its expert‘s testimony about Zydney), that the attaching method disclosed by Zydney is a standard technique—Multipurpose Internet Mail Extension (MIME) format. Appellees’ Br. at 49-50. The Board relied on Zydney‘s teachings of the MIME format, which allows attachment of files to be specified in a message header, to demonstrate that Zydney discloses attaching the files to the voice container. In view of this evidence, we find the Board‘s conclusion to be substantially supported.
CONCLUSION
We have considered Uniloc‘s remaining arguments and are unpersuaded. We affirm the Board‘s findings of unpatentability for claims 1-12, 14-17, 25, and 26 of the ‘433 patent.
AFFIRMED
Notes
(e) Estoppel.—
(1) Proceedings before the Office.—
The petitioner in an inter partes review of a claim in a patent under this chapter that results in a final written decision under section 318(a), or the real party in interest or privy of the petitioner, may not request or maintain a proceeding before the Office with respect to that claim on any ground that the petitioner raised or reasonably could have raised during that inter partes review.