Uniloc loses appeal of PTAB ruling at CAFC
The outcome:
Uniloc 2017 LLC appeals from a decision of the Patent Trial and Appeal Board in an inter partes review of Uniloc’s U.S. Patent No. 8,539,552 (“the ’552 patent”). The Board held claims 1–17 and 23–25 of the ’552 patent invalid for obviousness in view of U.S. Patent No. 6,324,279 to Kalmanek et al. (“Kalmanek”). Uniloc argues that the Board’s decision as to those claims resulted from an erroneous construction of a claim term. In its cross-appeal, Apple Inc. argues that the Board erred by holding that Apple failed to show that the remaining claims of the ’552 patent, claims 18–22, would have been obvious in view of Kalmanek. We affirm.
Uniloc relies on an analogy to football:
Uniloc argues that under the plain and ordinary meaning of “intercepting,” the entity that “intercepts” a message cannot be an intended recipient of the message. To support that argument, Uniloc cites various dictionary definitions and relies on the following analogy: A player making an interception in football is not the intended receiver of the ball but instead seizes the ball on its way to the intended receiver. Uniloc contends that the Board’s construction improperly permits the network entity intercepting the signaling message to be an intended recipient of the message even if there is an additional intended recipient downstream. Uniloc is correct that the signaling message can have only one true “intended recipient,” as the claims of the ’552 patent use that term. Claim 1 specifies that the intercepted signaling message is “associated with a call between a sender device of the message and an intended recipient device.” Claim 1 later refers to “the intended recipient,” making clear that the client device on the other end of the impending call is the one true “intended recipient.” However, just because the receiving client device is the ultimate “intended recipient” does not mean that the sending client device cannot intentionally direct the message to the intercepting entity. To the contrary, the patent contemplates that the sending client device will purposely direct the message through an intermediate recipient. For example, in one embodiment, the patent describes “a caller send[ing] an INVITE message to a callee by way of a proxy server,” ’552 patent, col. 6, ll. 1–2 (emphasis added), where the proxy server effectively performs the intercepting, determining, and filtering steps recited by the claims, see id. at col. 6, ll. 17–25.
Footnote 4 contains an item of interest:
Uniloc also relies on statements from its expert witness, Dr. William C. Easttom, II, in support of its claim construction position. The Board, however, declined to credit that testimony over the intrinsic evidence in the record, both because Dr. Easttom failed to consider the full disclosure and prosecution history of the ’552 patent and because Uniloc hindered or prevented Apple from cross-examining him. See Apple, 2019 WL 4492895, at *5 n.9. We uphold the Board’s decision not to give substantial weight to Dr. Easttom’s declaration for those reasons.
There is text about the distinction between RECOUNTING an argument and ENDORSING the argument:
According to Apple, that statement reflects that the Board endorsed Apple’s theory that the gate controller’s handling of the SETUP message satisfies the step of determining an authorization relating to codec specification. We disagree. As a preliminary matter, in the cited passage the Board was merely recounting Apple’s assertions, not endorsing them. See id. Moreover, the most reasonable reading of pages 36 through 38 of Apple’s petition is that the gate controllers of Kalmanek cannot determine an authorization of codec level using just the SETUP message. Supporting that interpretation is Apple’s statement in that section of its petition that “the [called party] sends a SETUPACK message that includes an acceptable CODING parameter,” followed by the statement that the “service provider then authorizes the requested quality of service for the call.” Petition for IPR, at 37 (emphasis added).
Separately, from blawgsearch:
Uniloc 2017 LLC appeals from a decision of the Patent Trial and Appeal Board in an inter partes review of Uniloc’s U.S. Patent No. 8,539,552 (“the ’552 patent”). The Board held claims 1–17 and 23–25 of the ’552 patent invalid for obviousness in view of U.S. Patent No. 6,324,279 to Kalmanek et al. (“Kalmanek”). Uniloc argues that the Board’s decision as to those claims resulted from an erroneous construction of a claim term. In its cross-appeal, Apple Inc. argues that the Board erred by holding that Apple failed to show that the remaining claims of the ’552 patent, claims 18–22, would have been obvious in view of Kalmanek. We affirm.
Uniloc relies on an analogy to football:
Uniloc argues that under the plain and ordinary meaning of “intercepting,” the entity that “intercepts” a message cannot be an intended recipient of the message. To support that argument, Uniloc cites various dictionary definitions and relies on the following analogy: A player making an interception in football is not the intended receiver of the ball but instead seizes the ball on its way to the intended receiver. Uniloc contends that the Board’s construction improperly permits the network entity intercepting the signaling message to be an intended recipient of the message even if there is an additional intended recipient downstream. Uniloc is correct that the signaling message can have only one true “intended recipient,” as the claims of the ’552 patent use that term. Claim 1 specifies that the intercepted signaling message is “associated with a call between a sender device of the message and an intended recipient device.” Claim 1 later refers to “the intended recipient,” making clear that the client device on the other end of the impending call is the one true “intended recipient.” However, just because the receiving client device is the ultimate “intended recipient” does not mean that the sending client device cannot intentionally direct the message to the intercepting entity. To the contrary, the patent contemplates that the sending client device will purposely direct the message through an intermediate recipient. For example, in one embodiment, the patent describes “a caller send[ing] an INVITE message to a callee by way of a proxy server,” ’552 patent, col. 6, ll. 1–2 (emphasis added), where the proxy server effectively performs the intercepting, determining, and filtering steps recited by the claims, see id. at col. 6, ll. 17–25.
Footnote 4 contains an item of interest:
Uniloc also relies on statements from its expert witness, Dr. William C. Easttom, II, in support of its claim construction position. The Board, however, declined to credit that testimony over the intrinsic evidence in the record, both because Dr. Easttom failed to consider the full disclosure and prosecution history of the ’552 patent and because Uniloc hindered or prevented Apple from cross-examining him. See Apple, 2019 WL 4492895, at *5 n.9. We uphold the Board’s decision not to give substantial weight to Dr. Easttom’s declaration for those reasons.
There is text about the distinction between RECOUNTING an argument and ENDORSING the argument:
According to Apple, that statement reflects that the Board endorsed Apple’s theory that the gate controller’s handling of the SETUP message satisfies the step of determining an authorization relating to codec specification. We disagree. As a preliminary matter, in the cited passage the Board was merely recounting Apple’s assertions, not endorsing them. See id. Moreover, the most reasonable reading of pages 36 through 38 of Apple’s petition is that the gate controllers of Kalmanek cannot determine an authorization of codec level using just the SETUP message. Supporting that interpretation is Apple’s statement in that section of its petition that “the [called party] sends a SETUPACK message that includes an acceptable CODING parameter,” followed by the statement that the “service provider then authorizes the requested quality of service for the call.” Petition for IPR, at 37 (emphasis added).
Separately, from blawgsearch:
posted by Lawrence B. Ebert at 4:51 PM
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