Trials@uspto.gov
`Tel: 571-272-7822
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` Paper 46
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`Entered: August 4, 2022
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`
`FACEBOOK, INC. and WHATSAPP INC,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`____________
`
`IPR2017-01668
`Patent 8,724,622 B2
`____________
`
`Before JENNIFER S. BISK, MIRIAM L. QUINN, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`BOUDREAU, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Final Written Decision on Remand
`Determining All Challenged Claims Unpatentable
`35 U.S.C. §§ 144, 318
`
`
`
`

`

`IPR2017-01668
`Patent 8,724,622 B2
`
`
`I. INTRODUCTION
`We address this case on remand after a decision by the U.S. Court of
`Appeals for the Federal Circuit in Uniloc 2017 LLC v. Facebook, Inc.,
`Nos. 2019-2162, -2159, 2021 WL 5370480 (Fed. Cir. Nov. 18, 2021).
`A. Background and Summary
`On June 22, 2017, Facebook, Inc. and WhatsApp Inc. (collectively,
`“Facebook”) filed a Petition requesting inter partes review of claims 4, 5,
`12, 24–26 of U.S. Patent No. 8,724,622 B2 (“the ’622 patent”). Paper 2
`(“Pet.”).1 Uniloc Luxembourg S.A. 2 filed a Preliminary Response. Paper 6
`(“Prelim. Resp.”). On January 19, 2018, we instituted inter partes review
`pursuant to 35 U.S.C. § 314 as to all challenged claims. Paper 8 (“Dec. on
`Inst.”).
`Following institution, Uniloc filed a Patent Owner Response.
`Paper 16 (“PO Resp.”). Facebook then filed a Reply. Paper 22 (“Reply”).
`Uniloc also filed a Motion to Exclude (Paper 21), and Facebook filed an
`Opposition thereto (Paper 24). Also during the pendency of the proceeding,
`
`1 That same day, Facebook also filed a petition challenging claims 3, 6–8,
`10, 11, 13–23, 27–35, 38, and 39 of the ’622 patent. IPR2017-01667,
`Paper 2.
`2 Uniloc Luxembourg S.A. was initially identified as the owner of the
`’622 patent and Uniloc USA, Inc. was identified as the licensee of the
`’622 patent and an additional real party in interest. Paper 3, 1 (Mandatory
`Notice by Patent Owner). In Updated Mandatory Notices filed August 25,
`2018, Uniloc 2017 LLC is identified as the owner of the ’622 patent, and
`Uniloc USA, Inc. and Uniloc Licensing USA LLC are identified as
`additional real parties in interest. Paper 28. For convenience, we refer to
`both Uniloc Luxembourg S.A. and Uniloc 2017 LLC hereinafter simply as
`“Uniloc.”
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`Apple Inc. (“Apple”), which filed a petition and motion for joinder in
`IPR2018-00580, was joined as a petitioner in this proceeding. Paper 27.
`We held an oral argument in the instant proceeding along with related
`proceedings IPR2017-01428 and IPR2017-01667 on August 30, 2018. A
`transcript of the oral hearing (“Tr.”) has been entered into the record as
`Paper 29. Following the oral hearing, we authorized additional briefing on
`claim construction with respect to the claim phrase “instant voice message”
`and its applicability to the asserted prior art, and the parties filed briefs in
`accordance with that order. See Papers 30–34.
`On January 16, 2019, following consideration of the full record
`developed during trial, we issued a Final Written Decision pursuant to
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73 in this proceeding and IPR2017-
`01667, which proceedings were consolidated for purposes of the Decision
`pursuant to 35 U.S.C. § 315(d). Paper 35 (“Final Dec.”). In the Final
`Written Decision, we concluded that Facebook had established by a
`preponderance of the evidence that claims 12 and 24–26 (and also claims 3,
`6–8, 10, 11, 13–23, 27–35, 38, and 39 challenged in IPR2017-01667) are
`unpatentable on the asserted grounds, but that Facebook had not established
`by a preponderance of the evidence that claims 4 and 5 are unpatentable. Id.
`Uniloc filed a request for rehearing (Paper 37), which we denied
`(Paper 38). Facebook then appealed to the Federal Circuit, alleging error in
`our determination that claims 4 and 5 in this proceeding were not shown to
`be unpatentable (Paper 38), and Uniloc cross-appealed (Paper 41). While
`the appeal was pending, Apple entered into a settlement agreement with
`Uniloc, and Apple and Uniloc jointly moved to voluntarily dismiss Apple as
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`a party to Uniloc’s appeal and to voluntarily dismiss a cross appeal
`(Paper 39) that Apple had filed. See Ex. 3002. The Federal Circuit granted
`the joint motion in an Order dated August 13, 2021. Ex. 3003.
`In a decision issued on November 18, 2021, the Federal Circuit
`affirmed our conclusions in the Final Written Decision that claims 12
`and 24–26 challenged in this proceeding and claims 3, 6–8, 10, 11, 13–23,
`27–35, 38, and 39 challenged in IPR2017-01667 are unpatentable, but held
`that “the Board misunderstood Facebook’s petition regarding claims 4
`and 5” and vacated our decision as to those claims and remanded for further
`proceedings regarding them. Uniloc, 2021 WL 5370480, at *1.
`We held a conference call with counsel for the parties on February 9,
`2022, to discuss the procedure on remand. In an Order entered February 14,
`2022, we authorized to parties to file additional briefing. Paper 42 (“Order
`on Remand”). In compliance with that Order, Uniloc filed an Opening Brief
`on Remand (Paper 43, “PO Opening Remand Br.”), Facebook filed a
`Response (Paper 44, “Pet. Resp. Remand Br.”), and Uniloc filed a Reply
`(Paper 45, “PO Reply Remand Br.”).
`As we explain above, neither claims 12 and 24–26 challenged in this
`proceeding nor claims 3, 6–8, 10, 11, 13–23, 27–35, 38, and 39 challenged
`in IPR2017-01667 are at issue on remand because the Federal Circuit upheld
`our determination of unpatentability with respect to those claims.
`Accordingly, the only claims that remain for our consideration are claims 4
`and 5.
`For the reasons discussed below, after considering the post-remand
`briefing, as well as the record previously developed during trial and the
`
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`Federal Circuit’s decision, we conclude that Facebook has shown by a
`preponderance of the evidence that claims 4 and 5 are unpatentable.
`B. Related Matters
`The parties have indicated that the ’622 patent was involved in Uniloc
`USA, Inc. v. WhatsApp Inc., No. 2:16-cv-00645 (E.D. Tex.), and Uniloc
`USA, Inc. v. Facebook, Inc., No. 2:16-cv-00728 (E.D. Tex.), among
`numerous other actions in the United States District Court for the Eastern
`District of Texas. See, e.g., Paper 28, 3.
`The ’622 patent also was the subject of inter partes review
`proceedings in IPR2017-01797 and IPR2017-01798 (filed by Samsung
`Electronics America, Inc.), in which cases we issued a consolidated final
`written decision on January 31, 2019, concluding that claims 3, 4, 6–8, 10–
`19, 21–35, 38, and 39 had been shown to be unpatentable. IPR2017-01797,
`Paper 32. Our decision in those cases was vacated and remanded to the
`Board by the Federal Circuit on February 27, 2020, for proceedings
`consistent with Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed.
`Cir. 2019). Uniloc 2017 LLC v. Samsung Elecs. Am., Inc., Nos. 19-2165, -
`2166, -2167, -2168, -2169 (Fed. Cir. Feb. 27, 2020) (order granting motion
`to vacate and remand). Prior to issuance of a decision on remand, the parties
`in those cases settled, and the proceedings were terminated. IPR2017-
`01797, Paper 39.
`Still further, the ’622 patent also has been the subject of petitions for
`inter partes review in IPR2017-00223, IPR2017-00224, IPR2017-01804,
`and IPR2017-01805, filed by Apple, and IPR2017-02080 and IPR2017-
`02081, filed by Google, Inc., all of which were denied.
`
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`
`C. Overview of the ’622 Patent
`The ’622 patent, titled “System and Method for Instant VoIP
`Messaging,” relates to Internet telephony, and more particularly, to instant
`voice over IP (“VoIP”) messaging over an IP network, such as the Internet.
`Ex. 1101, code (54), 1:18–22. The ’622 patent acknowledges that “[v]oice
`messaging” and “instant text messaging” in both the VoIP and public
`switched telephone network environments were previously known. Id.
`at 2:22–46. In prior art instant text messaging systems, according to the
`’622 patent, a server would present a user of a client terminal with a “list of
`persons who are currently ‘online’ and ready to receive text messages,” the
`user would “select one or more” recipients and type the message, and the
`server would immediately send the message to the respective client
`terminals. Id. at 2:34–46. According to the ’622 patent, however, “there is
`still a need in the art for . . . a system and method for providing instant VoIP
`messaging over an IP network,” such as the Internet. Id. at 1:18–22, 2:47–
`59, 6:47–49.
`In one embodiment, the ’622 patent discloses local instant voice
`messaging (“IVM”) system 200, depicted in Figure 2 below. Ex. 1101,
`6:22–24.
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`As illustrated in Figure 2, local packet-switched IP network 204,
`which may be a local area network (“LAN”), “interconnects” IVM
`clients 206, 208 and legacy telephone 110 to local IVM server 202. Id.
`at 6:50–7:2; see id. at 7:23–24, 7:61–65. Local IVM server 202 enables
`instant voice messaging functionality over network 204. Id. at 7:61–65.
`In “record mode,” IVM client 208 “displays a list of one or more IVM
`recipients,” provided and stored by local IVM server 202, and the user
`selects recipients from the list. Ex. 1101, 7:57–59, 7:65–8:4. IVM
`client 208 then transmits the selections to IVM server 202 and “records
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`the user’s speech into . . . digitized audio file 210 (i.e., an instant voice
`message).” Id. at 8:4–11.
`When the recording is complete, IVM client 208 transmits audio
`file 210 to local IVM server 202, which delivers the message to the selected
`recipients via local IP network 204. Ex. 1101, 8:15−29. “[O]nly the
`available IVM recipients, currently connected to . . . IVM server 202, will
`receive the instant voice message.” Id. at 8:33−34. IVM server 202
`“temporarily saves the instant voice message” for any IVM client that is “not
`currently connected to . . . local IVM server 202 (i.e., is unavailable)” and
`“delivers it . . . when the IVM client connects to . . . local IVM server 202
`(i.e., is available).” Id. at 8:34–39; see id. at 9:17–21. Upon receiving the
`instant voice message, the recipients can audibly play the message. Id.
`at 8:29–32.
`D. Claims in Issue
`Challenged claims 4 and 5 depend directly or indirectly from
`independent claim 3 of the ’622 patent. Claims 3–5 are reproduced below.
`3. A system comprising:
`a network interface connected to a packet-switched network;
`a messaging system communicating with a plurality of instant
`voice message client systems via the network interface; and
`a communication platform system maintaining connection
`information for each of the plurality of instant voice
`message client systems indicating whether there is a current
`connection to each of the plurality of instant voice message
`client systems,
`wherein the messaging system receives an instant voice
`message from one of the plurality of instant voice message
`client systems, and
`wherein the instant voice message includes an object field
`including a digitized audio file.
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`
`4. The system according to claim 3, wherein the instant voice
`message includes an action field identifying one of a predetermined
`set of permitted actions requested by the user.
`5. The system according to claim 4, wherein the predetermined set
`of permitted actions includes at least one of a connection request, a
`disconnection request, a subscription request, an unsubscription
`request, a message transmission request, and a set status request.
`Ex. 1101, 24:12–35.
`E. Asserted Prior Art and Instituted Ground of Unpatentability
`Facebook asserts that claims 4 and 5 are unpatentable under 35 U.S.C.
`§ 103 over the combination of the following three prior art references:
`
`a) Zydney: PCT App. Pub. No. WO 01/11824 A2, published Feb. 15,
`2001 (Ex. 1103, with line numbers added by Facebook);
`b) Shinder: Excerpts from Debra Littlejohn Shinder, Computer
`Networking Essentials (2002) (Ex. 1114); and
`c) Hethmon: Excerpts from Paul S. Hethmon, Illustrated Guide to
`HTTP (1997) (Ex. 1109).
`Facebook also relies on the Declaration of Tal Lavian, Ph.D.
`(Ex. 1102, “Lavian Decl.”).
`Uniloc relies on the Declaration of William C. Easttom II (Ex. 2001,
`“Easttom Decl.”).
`
`II. ANALYSIS
`
`A. Legal Standards
`In an inter partes review, the petitioner has the burden of proving
`unpatentability by a preponderance of the evidence. 35 U.S.C. § 316(e). That
`burden never shifts to the patentee. Dynamic Drinkware, LLC v. Nat’l
`Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015).
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`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter and the prior art are “such
`that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations, including (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of skill in the art;3 and (4) when in evidence, objective indicia
`of obviousness or non-obviousness (i.e., secondary considerations).4
`Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). One seeking to
`establish obviousness based on more than one reference also must articulate
`sufficient reasoning with rational underpinnings to combine teachings. See
`KSR, 550 U.S. at 418.
`
`3 Citing the testimony of Dr. Lavian, Facebook asserts that a person of
`ordinary skill in the art for purposes of the ’622 patent “would have
`possessed at least a bachelor’s degree in computer science, computer
`engineering, or electrical engineering with at least two years of experience in
`development and programming relating to network communication systems
`(or equivalent degree or experience).” Pet. 6 (citing Ex. 1102 ¶¶ 13–15).
`Uniloc cites Dr. Easttom as providing a similar definition, noting also that
`“Mr. Easttom believes Dr. Lavian’s opinions concerning a [person of
`ordinary skill in the art] are essentially the same as his, and any differences
`are inconsequential to the dispute before the Board.” PO Resp. 5 (citing
`Ex. 2001 ¶¶ 13, 15). Consistent with our Final Written Decision (see Final
`Dec. 24 n.8), we adopt Facebook’s assessment to the extent necessary for
`purposes of this Decision.
`4 The parties do not address secondary considerations, which, therefore, do
`not constitute part of our analysis.
`
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`
`B. Overview of the Cited References
`1. Zydney
`Zydney relates to packet communication systems that provide for
`voice exchange and voice distribution between users of computer networks.
`Ex. 1103, codes (54), (57), 1:4–5. While acknowledging that e-mail and
`instant messaging systems were well-known text-based communication
`systems utilized by users of online services, and that it was possible to attach
`files for the transfer of non-text formats via those systems, Zydney states
`that the latter technique “lack[ed] a method for convenient recording,
`storing, exchanging, responding and listening to voices between one or more
`parties, independent of whether or not they are logged in to their network.”
`Id. at 1:7–17. Zydney thus describes a method in which “voice
`containers”—i.e., “container object[s] that . . . contain[] voice data or voice
`data and voice data properties”—can be “stored, transcoded and routed to
`the appropriate recipients instantaneously or stored for later delivery.” Id. at
`1:19–22; 12:6–8. Figure 1A of Zydney is reproduced below.
`
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`Figure 1A, above, illustrates a high-level functional block diagram of
`Zydney’s system for voice exchange and voice distribution. Id. at 10:19–20.
`Referring to Figure 1A, system 20 allows software agent 22, with a user
`interface, in conjunction with central server 24, to send messages using
`voice containers illustrated by transmission line 26 to another software
`agent 28, as well as to receive and store such messages, in a “pack and send”
`mode of operation. Id. at 10:20–11:1. Zydney explains that a pack and send
`mode of operation “is one in which the message is first acquired,
`compressed and then stored in a voice container 26 which is then sent to its
`destination(s).” Id. at 11:1–3. The system has the ability to store messages
`both locally and centrally at server 24 whenever the recipient is not available
`for a prescribed period of time. Id. at 11:3–6.
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`In the use of Zydney’s system and method, the message originator
`selects one or more intended recipients from a list of names that have been
`previously entered into the software agent. Id. at 14:17–19. The agent
`permits distinct modes of communication based on the status of the
`recipient, including the “core states” of whether the recipient is online or
`offline and “related status information” such as whether the recipient does
`not want to be disturbed. Id. at 14:19–15:1. Considering the core states, the
`software agent offers the originator alternative ways to communicate with
`the recipient, the choice of which can be either dictated by the originator or
`automatically selected by the software agent, according to stored rules. Id.
`at 15:3–6. If the recipient is online, the originator can either begin a
`real-time “intercom” call, which simulates a telephone call, or a voice instant
`messaging session, which allows for an interruptible conversation. Id.
`at 15:8–10. If the recipient is offline, the originator can either begin a voice
`mail conversation that will be delivered the next time the recipient logs in or
`can be delivered to the recipient’s e-mail as a digitally encoded
`Multipurpose Internet Mail Extension (“MIME”) attachment. Id. at 15:15–
`17. Zydney explains that the choice of the online modes “depends on the
`activities of both parties, the intended length of conversation and the quality
`of the communication path between the two individuals, which is generally
`not controlled by either party,” and that the choice of the offline delivery
`options “is based on the interests of both parties and whether the recipient is
`sufficiently mobile that access to the registered computer is not always
`available.” Id. at 15:10–14, 15:17–19.
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`Once the delivery mode has been selected, the originator digitally
`records messages for one or more recipients using a microphone-equipped
`device and the software agent. Id. at 16:1–3. The software agent
`compresses the voice and stores the file temporarily on the PC if the voice
`will be delivered as an entire message. Id. at 16:3–4. If the real-time
`“intercom” mode has been invoked, a small portion of the digitized voice is
`stored to account for the requirements of the Internet protocols for
`retransmission and then transmitted before the entire conversation has been
`completed. Id. at 16:4–7. Based on status information received from the
`central server, the agent then decides on whether to transport the voice
`containers to a central file system and/or sends it directly to another software
`agent using the IP address previously stored in the software agent. Id.
`at 16:7–10. If the intended recipient has a compatible active software agent
`on line after log on, the central server downloads the voice recording almost
`immediately to the recipient. Id. at 16:10–12. The voice is uncompressed
`and the recipient can hear the recording through the speakers or headset
`attached to its computer. Id. at 16:12–14. The recipient can reply in a
`complementary way, allowing for near real-time communications. Id.
`at 16:14–15. If the recipient’s software agent is not on line, the voice
`recording is stored in the central server until the recipient’s software agent is
`active. Id. at 16:15–17. In both cases, the user is automatically notified of
`available messages once the voice recordings have been downloaded to
`storage on their computer. Id. at 16:17–19. The central server coordinates
`with software agents on all computers continuously, updating addresses,
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`uploading and downloading files, and selectively retaining voice recordings
`in central storage. Id. at 16:19–21.
`Zydney discloses that the voice container also has the ability to have
`other data types attached to it. Id. at 19:6–7. Formatting the container using
`MIME format, for example, “allows non-textual messages and multipart
`message bodies attachments [sic] to be specified in the message headers.”
`Id. at 19:7–10.
`Figure 3 of Zydney is reproduced below.
`
`
`Figure 3, above, illustrates an exemplary embodiment of Zydney’s voice
`container having voice data and voice data properties components. Id.
`at 2:19, 23:1–2. Referring to Figure 3, voice container components include:
`[O]riginator’s code 302 (which is a unique identifier), one or
`more recipient’s code 304, originating time 306, delivery
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`time(s) 308, number of “plays” 310, voice container source 312
`which may be a PC, telephone agent, non-PC based appliance, or
`other, voice container reuse restrictions 314 which may include
`one time and destroy 316, no forward 318, password
`retrieval 320, delivery priority 322, session values 324, session
`number 326, sequence number for partitioned sequences[] 328,
`repeating information 330, no automatic repeat 332, repeat
`times 334, and a repeat schedule 336.
`Id. at 23:2–10.
`2. Shinder
`Shinder provides an overview of the “fundamentals of computer
`networking concepts and implementation.” Ex. 1114, 5. According to
`Shinder, it is “becom[ing] vital to business interests that a LAN be able to
`communicate with the outside” and, thus, to connect to a wide area network
`(“WAN”), such as the Internet. Id. at 31.
`3. Hethmon
`Hethmon provides a guide to Hypertext Transfer Protocol (“HTTP”),
`focusing primarily on version HTTP/1.1. Ex. 1109, 1; see also id. at 9–13
`(briefly describing historical versions HTTP/0.9 and HTTP/1.0). Hethmon
`explains that HTTP is the protocol used to send and receive messages
`between Web clients and servers over the Internet. Id. at 7. Hethmon
`describes HTTP as a “request-response” type of protocol, in which a client
`application sends a request to the server and then the server responds to the
`request. Id. According to Hethmon, the “Request Message” sent by a client
`to a server to request a resource in HTTP/1.1 included a “Request-Line and
`possibly a set of header lines,” with the following overall syntax:
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`
`= Request-Line
`Request
` * ( General-Header
`
` | Request-Header
`
` | Entity-Header )
`
` CRLF
`
` [ Entity-Body ]
`
`Request-Line = Method SP Request-URI SP HTTP-Version CRLF
`
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`Id. at 51. Hethmon explains that “[t]he request line is the message sent by
`the client to the server to request a resource or an action to take place” and
`that “[a]ll request lines begin with a Method,” where the “Method” is “a
`keyword such as GET or POST which indicate[s] the type [of] action the
`request is asking the server to execute.” Id. at 51–52. Hethmon further
`explains that there were seven basic methods available in HTTP/1.1:
`OPTIONS, GET, HEAD, POST, PUT, DELETE, and TRACE. Id. at 52.
`C. Obviousness of Claims 4 and 5 over Zydney, Shinder, and Hethmon
`1. Conclusions in Final Written Decision
`As reproduced above, claim 4 depends from claim 3 and further
`recites “wherein the instant voice message includes an action field
`identifying one of a predetermined set of permitted actions requested by the
`user.” See supra § I.D; Ex. 1101, 24:28–30. Claim 5 depends from claim 4.
`Id. at 24:31–35. In the Petition, Facebook points to Zydney as disclosing all
`limitations of independent claim 3, except that it relies on “Zydney, alone
`and in combination with Shinder,” as rendering obvious the recited “network
`interface” and on Shinder’s disclosure that “[a]n example of a packet-
`switched network is the Internet” (Ex. 1114, 19) as rendering obvious that
`the Internet (as disclosed in Zydney) would have been a packet-switched
`network. Pet. 21–36. As stated above, we determined in the Final Written
`
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`Decision that Facebook had shown by a preponderance of the evidence that
`claim 3 is unpatentable over the combination of Zydney and Shinder, and the
`Federal Circuit affirmed our Decision in that regard. Final Dec. 39–55;
`Uniloc, 2021 WL 5370480, at *5–6, *9. In reaching that conclusion, we
`explained, inter alia, that we agreed with Facebook’s mapping of Zydney’s
`voice container to the “instant voice message” recited in claim 3, based in
`part on our construction of that term as “data content including a
`representation of an audio message.” Final Dec. 15, 44–45. We agreed with
`Facebook that Zydney’s voice container is received by Zydney’s central
`server, including components identified as corresponding to the recited
`“messaging system” of claim 3, from a sending client system (i.e., “one of
`the plurality of instant voice message client systems,” in the parlance of
`claim 3) and that the voice container would contain voice data (i.e., a
`digitized audio file) in an “object field.” Id. at 44–54.
`In contrast with our conclusion regarding claim 3, we concluded that
`Facebook had not shown by a preponderance of the evidence that claims 4
`and 5 are unpatentable in view of the asserted ground based on Zydney,
`Shinder, and Hethmon. Final Dec. 98–103. First, we noted that Facebook
`had conceded that “Zydney does not appear to explicitly describe” that the
`instant voice message contains an “action field,” as recited in claim 4, and
`that Facebook had relied instead on Hethmon’s disclosure of an HTTP/1.1
`message having “Method[s]” in its Request-Line that Facebook alleged to
`teach the recited action field. Although we did not disagree with Facebook’s
`contentions regarding Hethmon’s teachings, we explained that we
`understood the combination of Hethmon with Zydney and Shinder “would
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`result in ‘instant voice message’ being ‘distinct from’ such ‘action field’ . . .
`rather than ‘includ[ing]’ the action field as claim 4 explicitly recites,” based
`on what we perceived to be Facebook’s “consistent[] reli[ance] on Zydney’s
`voice container as being the recited ‘instant voice message’ of claim 3, from
`which claim 4 depends.” Id. at 102–03.
`2. The Federal Circuit’s Decision on Appeal
`In its decision on appeal, the Federal Circuit found that “[t]he Board
`did not consider whether the HTTP message, which undisputedly included
`an action field, could be considered the claimed ‘instant voice message,’ as
`the Board evidently did not see Facebook as having made such a contention
`for claim 4.” Uniloc, 2021 WL 5370480, at *5. In particular, the Court
`agreed with Facebook that we “overlooked its argument about claim 4,
`starting in its pertinent petition, that the required ‘instant voice message
`includ[ing] an action field’ was taught by an HTTP message as a whole, in
`which the Request-Line portion contains the action field (specifically a
`POST method) and the Entity-Body carries the Zydney voice container,” and
`held that we committed an abuse of discretion in overlooking and not
`considering that argument. Id. at *7. As explained by the Court:
`Facebook made clear that it was addressing why the HTTP
`message, based on the combination of Zydney and Hethmon,
`meets the claim 4 requirement that “the instant voice message
`contains a ‘field’ that identifies one of a predetermined set of
`permitted actions requested by the user.” It made its argument
`for that conclusion by detailing the components of an HTTP
`message and stating that the Request-Line component would
`contain the required action field (a POST method), while the
`body of the message would carry the voice container of
`Zydney. . . . All of this, fairly read, conveys that the HTTP
`message as a whole is an “instant voice message” meeting the
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`claim 4 requirement. When Facebook, in its reply, was more
`explicit in so stating, . . . it was permissibly clarifying what it had
`said in the petition, not making a previously unmade point.
`The Board did not state, and Uniloc has not advanced, any
`contrary fair reading the petition or reply passages. . . . Uniloc
`suggested at oral argument that the petition’s reference to “the
`voice container being carried in an HTTP/1.1 message that
`includes an ‘action field,’ e.g. the ‘POST’ method described
`above,” may be indicating that it is the voice container, not the
`HTTP message, that “includes an ‘action field’” (and hence is
`the claimed instant message). Similarly, in its briefing, Uniloc
`stated that the reply’s reference to “the Zydney voice container,
`transported as the payload of an HTTP message disclosing the
`claimed ‘instant voice message,’” is “at best ambiguous,”
`seemingly implying that “claimed ‘instant voice message’” could
`modify “Zydney voice container” rather than “HTTP message.”
`But these are unnatural readings . . . .
`the
`in
`that,
`More substantively, Uniloc stresses
`immediately preceding discussion of claim 3 in the petition, the
`Zydney voice container is itself the claimed “instant voice
`message,” whereas the claim 4 petition passage, in Facebook’s
`reading, asserts that something else, namely, the HTTP message
`as a whole, is (also) the “instant voice message.” That shift may
`have been surprising, but Uniloc makes too much of it. Uniloc
`has acknowledged that there is no inconsistency between the two
`theories, and there is nothing improper about arguing that the
`prior art discloses particular claim language in several different
`ways. . . . Here, we think that the substance of the petition
`passage was sufficiently clear that the Board was obliged to
`recognize that substance—especially after the reply made it
`clearer.
`Id. at *8 (citations omitted). According to the Court, “[b]y overlooking
`[Facebook’s] statements [alleging that the HTTP message was the ‘instant
`voice message’ of claims 4 and 5] and instead basing its findings on the
`mistaken assumption that Facebook was treating only Zydney’s voice
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`container as teaching the instant voice message, the Board abused its
`discretion.” Id. Further, “[b]ecause the Board’s misunderstanding of
`Facebook’s submissions infected its assessment of claims 4 and 5,” the
`Court concluded that the Board’s determination regarding those claims must
`be set aside. Id. Nonetheless, the Court explained, because “the Board did
`not determine the correctness of the contention that the HTTP message
`meets claim 4’s requirements,” “it is not clear . . . 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.” Id. at *9. Under the
`circumstances, the Court held, “we think it advisable to vacate the Board’s
`decision regarding claims 4 and 5 and to remand for any further proceedings
`that may be warranted.” Id.
`3. Post-remand Briefing
`In its Opening Brief on Remand, Uniloc contends that Facebook did
`not meet its burden to show that the instant voice message recited in
`claims 4 and 5 is rendered obvious by a combination of Zydney and
`Het