IPR decision finding certain of Uniloc’s claims obvious based on disputed claim construction, and others non-obviousness, affirmed

Uniloc 2017 LLC v. Apple Inc. (USPTO as intervenor)

Docket No. 2020-1403, -1404 (http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-1403.OPINION.5-12-2021_1776581.pdf)


May 12, 2021

Brief Summary:  PTAB IPR claim construction and obviousness of certain claims, and nonobviousness of other claims, affirmed.

Summary:  Uniloc appealed PTAB IPR final written decision (FWD) finding certain claims of Uniloc’s US 8,539,552 invalid for obviousness, arguing the decision is based on erroneous claim construction.  Uniloc argued the PTAB erroneously “construed the term ‘intercepting’ to mean that ‘the signaling message is received by a network entity located between the endpoints of the call’” and that “under the plain and ordinary meaning of ‘intercepting,’ the entity that ‘intercepts’ a message cannot be an intended recipient of the message.”  While the FC panel agreed “that the signaling message can have only one true ‘intended recipient,’ as the claims of the ’552 patent use that term” but disagreed, finding “the patent contemplates that the sending client device will purposely direct the message through an intermediate recipient”, the PTAB’s construction was “not at odds with the plain meaning of the claims” and “supported by the prosecution history” (e.g., “intercepting” was introduced into the independent claims to overcome a prior art rejection; “the prosecution history, the specification, and the context of the particular claims in which the term ‘intercepting’ appears…[t]hose pieces of intrinsic evidence outweigh Uniloc’s reliance on dictionary definitions” (Finisar, FC 2008; Driessen, FC 2016; Jansen, FC 2003)).  The PTAB’s claim construction and obviousness conclusions were therefore affirmed.  Apple cross-appealed the PTAB’s decision that other claims of ‘552 patent not to be invalid for obviousness.  The FC panel agreed with the PTAB’s conclusion, however, finding Apple’s arguments unpersuasive (e.g., “Apple’s petition fails to establish that Kalmanek renders claim 18 obvious because Apple pointed to—and could only point to—both the SETUP and SETUPACK messages in Kalmanek when alleging invalidity of claim 18 of the ’552 patent.”)  The PTAB’s FWD was therefore affirmed.

This entry was posted in Claim Construction, Inter Parties Review (IPR), IPR, Obviousness. Bookmark the permalink.

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