Uniloc 2017 LLC v. Apple Inc., 2019-1197

UNILOC 2017 LLC, Appellant v. APPLE INC., SNAP INC., FACEBOOK, INC.,WHATSAPP, INC., Appellees

2019-1197

United States Court of Appeals for the Federal Circuit

February 11, 2021

NOTE: This disposition is nonprecedential.

Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in Nos. IPR2017-00221, IPR2017-01612, IPR2017-01636.

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.

HEIDI LYN KEEFE, Cooley LLP, Palo Alto, CA, for appellees Snap Inc., Facebook, Inc., WhatsApp, Inc. Also represented by MARK R. WEINSTEIN. Appellee Snap Inc. also represented by REUBEN HO-YEN CHEN. Appellees Facebook, 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 review ("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 unpatentable." 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.

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 enabling local and global instant VoIP messaging over an [Internet 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) system" 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 "record mode," "[t]he user selection . . . generates a start signal to the IVM client" and "[i]n response . . . , the IVM client . . . records the user's speech into a digitized audio file . . . (i.e., instant voice message) stored on the IVM client[.]" 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 audio 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 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 recipient 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, generating 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 delivering the instant voice message to the selected recipients over the network, the selected recipients enabled to audibly play the instant voice message, and the server temporarily storing the instant voice message 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:

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 recipients connected to an external network outside the local network, generating an instant voice message therefor, and transmitting the selected recipients and the instant 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 network, the selected recipients being enabled to audibly play the instant voice message, and the server temporarily storing the instant voice message 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. 25 ll. 22-39. Claim 16, which depends from independent 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:

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 transmitting the selected recipients and the instant 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 network 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 selected recipient is unavailable and delivering the stored instant voice message to the selected recipient once the selected recipient becomes available.

Id. col. 27 ll. 6-28.

II. The Prior Art

A. Malik

Entitled "Voice Message Delivery Over Instant Messaging," U.S. Patent No. 7,123,695 ("Malik") "is generally related to communications and, more particularly, is related 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 sending voice instant messages [('VIMs')]," and "includes a communications client of a user that is configured to generate a [VIM] and send a [VIM] to another user." J.A. 1163. Malik explains that "[a]n instant messaging network recognizes when a user is [']present' on the network." J.A. 1173. As a result, "the network sends [a] notification to other users (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 attempts 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 describes, in relevant part, "[a] user choos[ing] a recipient for a voice[] or video mail from the contacts book of the terminal[,]" after which "[t]he terminal forms a data connection to a server[.]" J.A. 1183. Väänänen explains that the message 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 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...