Thursday, November 18, 2021

Facebook achieves victory in cross-appeal in Uniloc 2017 case

The CAFC states that the PTAB "misunderstood" the petition of Facebook:

Uniloc 2017 LLC (Uniloc) owns U.S. Patent No. 8,724,622, which addresses instant voice messaging by use of voice-over-internet-protocol (VoIP) communications. Facebook, Inc. and WhatsApp, Inc. (collectively, Facebook) challenged various claims of the ’622 patent in two inter partes reviews in the Patent and Trademark Office. The Office’s Patent Trial and Appeal Board held all challenged claims unpatentable for obviousness, except for dependent claims 4 and 5. Facebook, Inc. v. Uniloc 2017 LLC, IPR2017-01668, Paper No. 35, at 111–12 (P.T.A.B. Jan. 16, 2019) (Final Written Decision). Both Uniloc and Facebook appeal. We reject Uniloc’s challenges to the Board’s decision. But on Facebook’s cross-appeal, we hold that the Board misunderstood Facebook’s petition regarding claims 4 and 5, and we therefore vacate the Board’s decision as to those claims and remand for any further proceedings as may be necessary and appropriate regarding those claims.

Of the issue

In short, Facebook’s petition together with the reinforcing reply statement put the Board on notice that Facebook was alleging that the HTTP message, not the Zydney voice container, was the “instant voice message” of claims 4 and 5. By overlooking those statements and instead basing its findings on the mistaken assumption that Facebook was treating only Zydney’s voice container as teaching the instant voice message, Final Written Decision at 102–03, the Board abused its discretion. Because the Board’s misunderstanding of Facebook’s submissions infected its assessment of claims 4 and 5, we must set aside the Board’s determination regarding those claims. See, e.g., Singh v. Brake, 222 F.3d 1362, 1370 (Fed. Cir. 2000). Failing to appreciate what Facebook had contended, the Board did not determine the correctness of the contention that the HTTP message meets claim 4’s requirements. At least for that reason, it is not clear to us whether, once Facebook’s contention is properly appreciated, Facebook is entitled to a determination of unpatentability of claims 4 or 5 or whether Uniloc may have properly preserved arguments that remain open after our decisions here (concerning, e.g., claim 24) and in Uniloc 2017 LLC v. Facebook Inc., 989 F.3d 1018, 1031–33 (Fed. Cir. 2021), and that could affect the bottom-line determination concerning claims 4 or 5. In these circumstances, we think it advisable to vacate the Board decision regarding claims 4 and 5 and to remand for any further proceedings that may be warranted.


Post a Comment

<< Home