Case: 19-2162 Document: 81 Page: 1 Filed: 11/18/2021
`
`NOTE: This disposition is nonprecedential.
`
`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`UNILOC 2017 LLC,
`Appellant
`
`v.
`
`FACEBOOK, INC., WHATSAPP, INC.,
`Cross-Appellants
`
`ANDREW HIRSHFELD, PERFORMING THE
`FUNCTIONS AND DUTIES OF THE UNDER
`SECRETARY OF COMMERCE FOR
`INTELLECTUAL PROPERTY AND DIRECTOR OF
`THE UNITED STATES PATENT AND TRADEMARK
`OFFICE,
`Intervenor
`______________________
`
`2019-2162, 2019-2159
`______________________
`
`Appeals from the United States Patent and Trademark
`Office, Patent Trial and Appeal Board in Nos. IPR2017-
`01667, IPR2017-01668, IPR2017-02090, IPR2018-00579,
`IPR2018-00580.
`
`______________________
`
`Decided: November 18, 2021
`______________________
`
`
`

`

`Case: 19-2162 Document: 81 Page: 2 Filed: 11/18/2021
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`2
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`UNILOC 2017 LLC v. FACEBOOK, INC.
`
`BRIAN MATTHEW KOIDE, Etheridge Law Group, South-
`lake, TX, argued for appellant. Also represented by JAMES
`ETHERIDGE, RYAN S. LOVELESS, BRETT MANGRUM, JEFFREY
`A. STEPHENS.
`
` HEIDI LYN KEEFE, Cooley LLP, Palo Alto, CA, argued
`for cross-appellants. Also represented by LOWELL D. MEAD,
`MARK R. WEINSTEIN; PHILLIP EDWARD MORTON, Washing-
`ton, DC.
`
` ROBERT MCBRIDE, Office of the Solicitor, United States
`Patent and Trademark Office, Alexandria, VA, for interve-
`nor. Also represented by THOMAS W. KRAUSE, FARHEENA
`YASMEEN RASHEED.
`______________________
`
`Before LOURIE, REYNA, and TARANTO, Circuit Judges.
`TARANTO, Circuit Judge.
`(Uniloc) owns U.S. Patent
`Uniloc 2017 LLC
`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 deci-
`sion. 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.
`
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`UNILOC 2017 LLC v. FACEBOOK, INC.
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`3
`
`I
`A
`The ’622 patent, entitled “System and Method for In-
`stant VoIP Messaging,” describes a “system and method for
`enabling local and global instant VoIP messaging.” ’622
`patent, title and col. 2, lines 57–59. A local, packet-
`switched IP network connects an instant voice message cli-
`ent, such as a telephone or a telephony-capable computer,
`to a local instant voice message server. Id., Fig. 2; id.,
`col. 6, line 50 through col. 7, line 36. In “record mode,” the
`client “records the user’s speech into a digitized audio
`file . . . (i.e., an instant voice message),” then transmits it
`to the server. Id., col. 7, line 57 through col 8, line 26. The
`server in turn delivers the message to selected recipient cli-
`ents if those recipients are currently connected to the
`server. Id., col. 8, lines 26–34. If a selected recipient is not
`connected, the server “temporarily saves the instant voice
`message” and delivers it later, once the recipient connects.
`Id., col. 8, lines 34–39.
`For present purposes, claims 3, 4, 5, and 24 are illus-
`trative. They read:
`3. A system comprising:
`a network interface connected to a packet-switched
`network;
`a messaging system communicating with a plural-
`ity 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,
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`UNILOC 2017 LLC v. FACEBOOK, INC.
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`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 ob-
`ject field including a digitized audio file.
`Id., col. 24, lines 12–27 (emphasis added).
`4. The system according to claim 3, wherein the in-
`stant voice message includes an action field identi-
`fying one of a predetermined set of permitted actions
`requested by the user.
`Id., col. 24, lines 28–30 (emphasis added).
`5. The system according to claim 4, wherein the
`predetermined set of permitted action 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.
`Id., col. 24, lines 31–35.
`24. A system comprising:
`a network interface connected to a packet-switched
`network;
`a messaging system communicating with a plural-
`ity 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 connection
`object messages from the plurality of instant voice
`message client systems, wherein each of the
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`5
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`connection object messages includes data repre-
`senting a state of a logical connection with a given
`one of the plurality of instant voice message client
`systems.
`Id., col. 25, line 59 through col. 26, line 8 (emphasis added).
`B
`On June 22, 2017, Facebook filed two petitions with the
`Board for inter partes reviews of the ’622 patent. In one
`petition, Facebook challenged claims 3, 6–8, 10–11, 13–23,
`27–35, and 38–39. In the second petition, Facebook chal-
`lenged claims 4–5, 12, and 24–26.
`In its first petition, Facebook argued that claim 3 was
`unpatentable for obviousness over a combination of prior-
`art references including Zydney (PCT Pub. No. WO
`01/11824 A2). Facebook relied on certain passages of Zy-
`dney as disclosing the claim 3 limitation that “the instant
`voice message includes an object field including a digitized
`audio file.” J.A. 1554–56. Specifically, Zydney describes
`voice exchange and voice distribution between users of
`computer networks using “voice containers,” which are
`“container object[s] that contain[] no methods, but con-
`tain[] voice data or voice data and voice data properties.”
`Zydney, p. 1, line 19 through p. 2, line 10; id., p. 12, lines
`6–8. Zydney says that its voice container can be formatted
`using the multipurpose internet mail extension (MIME)
`format, which “allows non-textual messages and multipart
`message bodies attachments [sic] to be specified in the mes-
`sage headers.” Id., p. 19, line 7 through p. 20, line 9 (incor-
`porating by reference RFC [Request for Comments] 1521,
`which further describes the MIME protocol). Stating that
`an “object field” is “a field containing content that will ac-
`company the instant voice message, with the term ‘field’
`simply referring to a block of data containing a particular
`type of data,” Facebook contended that “Zydney discloses
`the claimed ‘object field’ in at least two independent ways.”
`J.A. 1554. First, “[i]t would . . . have been obvious that the
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`UNILOC 2017 LLC v. FACEBOOK, INC.
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`Zydney voice container would contain an ‘object field’ be-
`cause, without one, the recipient device could not separate
`the voice data from the other fields of data in the voice con-
`tainer and play back the voice data for the user—a capabil-
`ity the recipient in Zydney has.” J.A. 1555. Second,
`“[b]ecause Zydney itself discloses that voice containers can
`be encoded using MIME and directly cites to RFC 1521, it
`would have been plainly obvious to a person of ordinary
`skill in the art to provide the receiving software agent with
`the ability to format the voice container according to RFC
`1521, thus encoding the voice data in the body (an ‘object
`filed’) of the message.” J.A. 1555–56. To support those con-
`tentions, Facebook relied on the expert declaration of Dr.
`Tal Lavian. J.A. 251–57 (Lavian Decl., ¶¶ 136–45).
`Regarding claim 4, which depends on claim 3, Facebook
`relied in its second petition on a combination that, as rele-
`vant here, included Zydney and Paul S. Hethmon, Illus-
`trated Guide to HTTP (1997). Hethmon is a reference book
`that discusses version 1.1 of Hypertext Transfer Protocol
`(HTTP/1.1), which is a protocol for sending requests and
`responses between client and server computers over the in-
`ternet. Hethmon at 10–17; see also J.A. 225–26, 355–56
`(Lavian Decl., ¶¶ 95, 305). Facebook argued that Zydney
`and Hethmon disclosed the claim 4 limitation “wherein the
`instant voice message includes an action field identifying
`one of a predetermined set of permitted actions requested
`by the user.” ’622 patent, col. 24, lines 28–30; J.A. 2672–
`80.
`
`Although claim 3 was not itself challenged in the sec-
`ond petition, Facebook discussed the elements of claim 3
`(incorporated into challenged claims 4 and 5) as “a founda-
`tion for analyzing the obviousness of claims” 4 and 5.
`J.A. 2655. In that discussion, Facebook stated that “Figure
`1A of Zydney . . . expressly shows the central server (which
`contains the messaging system) receiving a ‘voice con-
`tainer’ (instant voice message) from a sending client sys-
`tem,” thus treating Zydney’s voice container as teaching
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`claim 3’s “instant voice message.” J.A. 2668. Then, when
`discussing claim 4 and its added “action field” limitation,
`Facebook turned to Hethmon as teaching that limitation in
`combination with Zydney. J.A. 2672–80. What Facebook
`said there about how the Zydney-Hethmon combination
`teaches an “instant voice message [that] includes an action
`field identifying one of a predetermined set of permitted
`actions requested by the user,” ’622 patent, col. 24, lines
`28–30 (emphasis added), is the source of the dispute now
`before us over the Board’s rejection of Facebook’s challenge
`to claim 4 (and its dependent claim 5).
`Recognizing that the instant voice message must “in-
`clude” the required action field, Facebook asserted that
`while “Zydney does not appear to explicitly describe that
`the instant voice message contains a ‘field’ that identifies
`one of a predetermined set of permitted actions requested
`by the user,” “this feature would have been obvious over
`Zydney in view of Hethmon, which confirms that the
`claimed ‘action field’ is a well-known and built-in feature
`of [HTTP/1.1].” J.A. 2672. Facebook explained that
`HTTP/1.1 clients communicate with the server through re-
`quest messages, which contain a “Request-Line” element
`that specifies a “Method” to indicate the type of action re-
`quested of the server, as well as an “Entity-Body” field in
`which “[t]he data to be transmitted is contained.” J.A.
`2672–74 (citing Hethmon at 10–11, 54–61, 78; J.A. 355–58
`(Lavian Decl., ¶¶ 304–09)). Facebook said: “The ‘Method’
`field in the ‘Request-Line’ is the critical field for purposes
`of claim 4.” J.A. 2673 (citing Hethmon at 55). One such
`method, called POST, is used to transmit data of various
`types. J.A. 2674 (citing Hethmon at 78; J.A. 357–58 (La-
`vian Decl., ¶ 309)). Facebook elaborated:
`An HTTP message with a POST method provides
`an example of an action field identifying one of
`a predetermined set of permitted actions re-
`quest by the user, as claimed. In fact, the ’622
`patent expressly refers to a “post message” as one
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`UNILOC 2017 LLC v. FACEBOOK, INC.
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`of the permitted actions that can be in the “action
`field.” (’622, 14:6–10.)
`Rationale and Motivation to Combine. As
`noted previously, Zydney explains that an instant
`voice message can be sent by the sender to central
`server. (Zydney, 16:7–12, 15:19–21, 27:15–16; Fig.
`1A (showing voice container transmission path
`through the central server), Fig. 8 (Step 1.2.3.).) It
`would have been obvious to a person of ordinary
`skill in the art to combine Zydney with Hethmon,
`with no change in their respective functions, pre-
`dictably resulting in the voice container of Zydney
`being transmitted by the sending client to the cen-
`tral server using HTTP/1.1 message. This, in turn,
`would have resulted in the voice container being
`carried in an HTTP/1.1 message that includes an
`“action field,” e.g. the “POST” method described
`above. And because the “POST” message in this
`combination was the result of the Zydney user’s de-
`cision to send an instant voice message, the action
`field includes a “permitted action[] requested
`by the user,” as claimed. A person of ordinary
`skill in the art would have had ample motivation to
`combine Zydney and Hethmon in this manner.
`(Lavian, ¶¶312–319.)
`J.A. 2675. Facebook repeated the point when discussing
`claim 5. J.A. 2680 (“The POST method specified in the
`HTTP request message . . . discloses a message transmis-
`sion request, as claimed, because it is used (in the combi-
`nation of Zydney and Hethmon) to transmit the voice
`container to the central server in Zydney.”) (quoting J.A.
`365–66 (Lavian Decl., ¶ 320)).
`As to claim 24, Facebook argued that the claim was un-
`patentable for obviousness over a combination of prior-art
`references including Zydney and Hethmon, which, Face-
`book said, together met claim 24’s requirement that “the
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`9
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`messaging system receives connection object messages
`from the plurality of instant voice message client systems.”
`’622 patent, col. 26, lines 3–5; J.A. 2681–88. Specifically,
`Facebook contended that “[t]he combination of Zydney and
`Hethmon here would have predictably resulted in Zydney’s
`instant voice messaging system in which the clients report
`their statuses using HTTP messages with POST methods,
`thus disclosing the claimed connection object messages.”
`J.A. 2685; see also J.A. 2682–83 (citing Zydney, p. 7, line 21
`through p. 8, line 6, p. 26, lines 16–19; Hethmon at 78; J.A.
`370–71 (Lavian Decl., ¶¶ 328–30)).
`C
`The Board instituted the requested reviews, determin-
`ing that Facebook had established a reasonable likelihood
`of prevailing on all challenged claims, J.A. 1666–704; J.A.
`2747–77, and Uniloc thereafter filed its patent owner’s re-
`sponses, J.A. 1758–807; J.A. 2811–38. Concerning claim
`3’s “object field” limitation, Uniloc argued in part that Zy-
`dney does not disclose an object field or digitized audio file
`specifically. J.A. 1781–88; Final Written Decision at 47–51
`(summarizing Uniloc’s seven responses on this limitation).
`As to claim 4’s requirement that “the instant voice message
`include[] an action field identifying one of a predetermined
`set of permitted actions requested by the user,” Uniloc re-
`sponded only that Zydney taught away from modifying the
`“voice container” to include elements such as Hethmon’s
`POST method (i.e., an action field) since Zydney’s voice
`“container—by intended design—contains no methods.”
`J.A. 2831–33; see also Zydney, p. 12, lines 6–8 (“The term
`‘voice containers’ as used throughout this application refers
`to a container object that contains no methods . . . .”).
`Uniloc made no additional arguments concerning Zydney
`and Hethmon’s disclosure of the additional limitation of
`claim 5. J.A. 2831–33. Finally, for claim 24’s requirement
`concerning “connection object messages,” Uniloc argued
`that Zydney taught away from the combination for multi-
`ple, independent reasons, J.A. 2833–36, including that
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`Zydney “purports to utilize transport mechanisms that rely
`on data compression of then-existing hardware and soft-
`ware” but that HTTP in August 2000 did not have compres-
`sion capabilities, J.A. 2836 (citing Zydney, p. 11, lines 14–
`16; J.A. 3462, 3467 (Easttom Decl., ¶¶ 51, 64)).
`Facebook then filed replies. J.A. 1835–65; J.A. 2861–
`86. Regarding the “object field” limitation of claim 3, Face-
`book responded (in part) that Uniloc’s position “appears to
`assume an unstated narrow claim interpretation of the
`term ‘object field’ (e.g., that it is a ‘specific type of field’),”
`but that “[u]nder either the plain and ordinary meaning
`informed by the specification or under the construction
`[Uniloc] proposed in [earlier] litigation, Zydney discloses
`and renders obvious that the instant voice message (voice
`container) contains an object field (block of data) including
`an audio file, for the reasons explained in the Petition.”
`J.A. 1848–53. Regarding claim 4’s “action field” limitation,
`Facebook answered that Uniloc had “misstate[d] the pro-
`posed obviousness combination.” J.A. 2874–76. Specifi-
`cally, Facebook stated:
`The combination would not result in the voice con-
`tainer itself containing any methods. Rather, the
`Petition explains that it would have been obvious
`to transport the voice containers in Zydney as the
`“payload” contained in [HTTP/1.1] messages as
`taught by Hethmon. (Petition at 40–42.) Using
`[HTTP/1.1], the voice container would be contained
`as the “entity body” in an HTTP POST message, for
`example. (Petition at 39–40; Hethmon, pp. 54 (“En-
`tity-Body” field), 78 (“[u]sing the POST method, the
`client sends an entity body to the server for pro-
`cessing”).) The Request-Line in the HTTP message
`is distinct from the Entity-Body “payload” of the
`message. (See id.) Therefore, the Zydney voice con-
`tainer, transported as the payload of an HTTP mes-
`sage disclosing
`the claimed
`“instant voice
`message,” would not contain any methods.
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`11
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`J.A. 2875. Finally, regarding claim 24’s “connection object
`messages” limitation, Facebook replied to each of Uniloc’s
`various teaching-away arguments. J.A. 2876–84. Specifi-
`cally, Facebook stated that Zydney does not require data
`compression when transmitting voice containers and that,
`even if it did, HTTP/1.1 in fact supported data compression
`as of August 2000, whether done separately by other soft-
`ware on the client device or through the HTTP protocol it-
`self. J.A. 2882–84 (citing Hethmon at 42, 47).
`D
`After hearing oral argument from the parties, the
`Board issued its final written decision on January 16, 2019,
`consolidating the proceedings and holding unpatentable all
`the challenged claims except claims 4 and 5. Final Written
`Decision at 1, 4–5, 112. On the “object field” limitation of
`claim 3, the Board specifically concluded it was “persuaded
`by [Facebook’s] evidence, including Dr. Lavian’s testimony,
`that it would have been obvious to a person of ordinary skill
`in the art . . . to include an object field in Zydney’s voice
`container” because, without a field to hold the voice data in
`the container, Zydney could not operate as specified. Id. at
`53–54 (citing J.A. 253–54 (Lavian Decl., ¶ 138 & n.13)).
`The Board also “credit[ed] Dr. Lavian’s unrebutted testi-
`mony, supported by RFC 1521, that when in MIME format,
`Zydney’s voice container would contain the digitized audio
`file—i.e., the voice data—in an object field.” Id. at 54 (cit-
`ing J.A. 255–57 (Lavian Decl., ¶¶ 141–44)). Similarly, the
`Board determined that the subject matter of claim 24
`would have been obvious to the relevant artisan, specifi-
`cally crediting the evidence that a relevant artisan would
`have made the Zydney-Hethmon combination using HTTP
`POST messages. Id. at 107–08.
`Regarding claim 4’s “action field” limitation, the Board
`concluded that Facebook had not established that the prior
`art taught this element. The Board reasoned:
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`[Facebook] . . . consistently relies on Zydney’s voice
`container as being the recited “instant voice mes-
`sage” of claim 3, from which claim 4 depends. See,
`e.g., 1668 Pet. 33 (reciting “a ‘voice container’ (in-
`stant voice message)”). Thus, even if we were to
`agree with [Facebook] that the HTTP/1.1 Request-
`Line, as described by Hethmon, “discloses an action
`field identifying one of a predetermined set of per-
`mitted actions requested by the user” (id. at 39),
`the combination of Hethmon with Zydney . . .
`would result in “instant voice message” being “dis-
`tinct from” such “action field” (see 1668 Reply 11)
`rather than “includ[ing]” the action field as claim 4
`explicitly recites. [Facebook] does not explain how
`an instant voice message distinct from an action
`field would have rendered obvious an instant voice
`message including an action field.
`Id. at 102–03. The Board did not consider whether the
`HTTP message, which undisputedly included an action
`field, could be considered the claimed “instant voice mes-
`sage,” as the Board evidently did not see Facebook as hav-
`ing made such a contention for claim 4. For that reason,
`the Board found that Facebook had failed to meet its bur-
`den on claim 4 and, hence, claim 5. Id. at 103.
`Facebook and Uniloc each timely appealed the Board’s
`final written decision. We have jurisdiction under 28
`U.S.C. § 1295(a)(4)(A) and 35 U.S.C. §§ 141(c), 319.
`II
`On appeal, Uniloc ultimately makes two contentions,
`having withdrawn certain additional challenges it substan-
`tially briefed, including a challenge to the Board’s determi-
`nation of unpatentability of claim 27. It argues that the
`Board committed reversible error in key factual determi-
`nations concerning (1) Zydney and the claim 3 requirement
`that an instant voice message include “an object field in-
`cluding a digitized audio file” and (2) the combination of
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`13
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`Zydney and Hethmon and the claim 24 “connection object
`message” limitation. We reject both challenges.
`We review the Board’s legal conclusions de novo and its
`factual findings for substantial-evidence support. Arendi
`S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1360 (Fed. Cir. 2016).
`The ruling on obviousness is a legal conclusion based on
`underlying determinations of fact. PersonalWeb Techs.,
`LLC v. Apple, Inc., 917 F.3d 1376, 1381 (Fed. Cir. 2019).
`Such factual determinations include what a prior-art refer-
`ence teaches and whether a prior-art reference teaches
`away. Gen. Elec. Co. v. Raytheon Techs. Corp., 983 F.3d
`1334, 1345 (Fed. Cir. 2020); Ariosa Diagnostics v. Verinata
`Health, Inc., 805 F.3d 1359, 1364 (Fed. Cir. 2015). “Sub-
`stantial evidence review asks ‘whether a reasonable fact
`finder could have arrived at the agency’s decision’ and re-
`quires examination of the ‘record as a whole, taking into
`account evidence that both justifies and detracts from an
`agency’s decision.’” Intelligent Bio-Systems, Inc. v. Illu-
`mina Cambridge Ltd., 821 F.3d 1359, 1366 (Fed. Cir. 2016)
`(quoting In re Gartside, 203 F.3d 1305, 1312 (Fed. Cir.
`2000)).1
`
`A
`Substantial evidence supports the Board’s finding
`about Zydney’s teaching related to claim 3—the crucial
`finding that supports the determination that “Zydney ren-
`ders obvious an instant voice message including ‘an object
`field including a digitized audio file,’ as recited in claim 3,”
`and hence by the challenged claims that depend on claim
`3. Final Written Decision at 53. Uniloc argues that there
`was not substantial evidence that a digitized audio file
`
`1 To the extent that Uniloc suggests that the Board
`
`failed to provide an explanation allowing us to discern the
`path of its reasoning, or failed to ask the legally required
`questions in its analysis, we reject the suggestion.
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`(rather than just voice data) would be in an object field (ra-
`ther than just a field) in Zydney. Uniloc Opening Br. 36–
`38; Uniloc Reply Br. 9–10. We disagree.
`First, the Board permissibly credited Dr. Lavian’s tes-
`timony that the voice container in Zydney must have a sep-
`arate field in which the voice data was stored. Final
`Written Decision at 53–54 (quoting J.A. 253–54 (Lavian
`Decl., ¶ 138 n.13)). Second, the Board reasonably found,
`again based on Dr. Lavian’s testimony, that Zydney dis-
`closed the limitation when the voice container was in
`MIME format. Id. at 54 (citing J.A. 255–57 (Lavian Decl.,
`¶¶ 141–44)). Dr. Lavian’s explanation sufficed to connect
`the concepts of a digitized audio file and voice data and the
`concepts of an object field and a field, using either of two
`claim constructions of “object field,” with no contrary con-
`struction meaningfully advanced or argued by Uniloc. See
`J.A. 254–56 (Lavian Decl., ¶¶ 139, 141) (concerning digit-
`ized audio files); J.A. 251–52 (Lavian Decl., ¶¶ 136–37) (ex-
`plaining two potential claim constructions for “object field”:
`one based on Uniloc’s position in pending litigation and one
`based on the broadest reasonable construction as informed
`by the specification); J.A. 1782–83 (Uniloc arguing in its
`response that an object field is “a specific type of field,”
`without additional elaboration).
`B
`Substantial evidence likewise supports the Board’s
`finding that the “connection object messages” limitation of
`claim 24 is taught by the sufficiently motivated combina-
`tion of Zydney and Hethmon. Final Written Decision at
`103–08. Uniloc’s only focused contention in this court con-
`cerns its argument to the Board that Zydney taught away
`from using the HTTP POST method taught by Hethmon,
`since (according to Uniloc) Zydney used transport mecha-
`nisms that relied on data compression of then-existing
`hardware and software and HTTP in August 2000 did not
`offer compression. Uniloc Opening Br. 39–40; Uniloc Reply
`
`

`

`Case: 19-2162 Document: 81 Page: 15 Filed: 11/18/2021
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`UNILOC 2017 LLC v. FACEBOOK, INC.
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`15
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`Br. 10–11. We reject this contention, concluding that the
`Board said enough to make clear that it was rejecting the
`contention and why.
`The Board stated that it generally “disagree[d] with
`[Uniloc’s] argument that Zydney teaches away from a com-
`bination in which the HTTP POST method described in
`Hethmon would be used as a vehicle to provide client status
`information to Zydney’s central server,” and, in support of
`that statement, the Board explained that it credited Dr.
`Lavian’s testimony undermining Uniloc’s numerous other,
`related teaching-away arguments. Final Written Decision
`at 107–08. Further, the Board stated that it was “per-
`suaded, for the reasons stated by [Facebook] and discussed
`above,” id. at 106, and the “above” discussion included rec-
`itations of Facebook’s specific counterarguments to
`Uniloc’s compression argument—counterarguments that
`are amply grounded in the disclosures of Zydney and Heth-
`mon, id.; see Zydney, p. 11, lines 14–16 (stating only that
`“the present invention is designed to adapt to the voice and
`data compression capabilities of the user’s existing hard-
`ware and software platform,” not that compression was re-
`quired or had to be carried out by the HTTP protocol itself);
`Hethmon at 42 (discussing content codings that “allow[] an
`application to serve resources in a compressed format”), 47
`(referring to “zip” and “gif” media types). Accordingly, we
`reject Uniloc’s challenge to the Board’s determination of
`unpatentability of claim 24 (and dependent challenged
`claims).
`
`III
`Facebook cross-appeals the Board’s determination that
`it did not carry its burden of proving claims 4 and 5 un-
`patentable for obviousness. Final Written Decision at 98–
`103. More specifically, Facebook contends that the Board
`overlooked its argument about claim 4, starting in its per-
`tinent petition, that the required “instant voice message in-
`clud[ing] an action field” was taught by an HTTP message
`
`

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`Case: 19-2162 Document: 81 Page: 16 Filed: 11/18/2021
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`16
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`UNILOC 2017 LLC v. FACEBOOK, INC.
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`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. Facebook Open-
`ing Br. 32–38; Facebook Reply Br. 2–8. We agree with Fa-
`cebook.
`We review the Board’s judgments concerning what ar-
`guments are fairly presented in a petition and other plead-
`ings for abuse of discretion. See Ericsson Inc. v. Intellectual
`Ventures I LLC, 901 F.3d 1374, 1379 (Fed. Cir. 2018); Al-
`taire Pharms., Inc. v. Paragon Bioteck, Inc., 889 F.3d 1274,
`1284 (Fed. Cir. 2018), remand order modified by stipula-
`tion, 738 F. App’x 1017 (Fed. Cir. 2018); Intelligent Bio-Sys-
`tems, 821 F.3d at 1367; see also AMC Multi-Cinema, Inc. v.
`Fall Line Patents, LLC, No. 2021-1051, 2021 WL 4470062,
`at *6 (Fed. Cir. Sep. 30, 2021); MModal LLC v. Nuance
`Commc’ns, Inc., 846 F. App’x 900, 906 (Fed. Cir. 2021). “An
`abuse of discretion is found if the decision: (1) is clearly un-
`reasonable, arbitrary, or fanciful; (2) is based on an errone-
`ous conclusion of law; (3) rests on clearly erroneous fact
`finding; or (4) involves a record that contains no evidence
`on which the Board could rationally base its decision.” In-
`telligent Bio-Systems, 821 F.3d at 1367 (citation omitted).
`Under those standards, we hold that the Board committed
`an abuse of discretion in overlooking, and therefore not
`considering, Facebook’s argument about the teaching of the
`HTTP message as a whole.
`Facebook’s petition provided “an understandable ex-
`planation of the element-by-element specifics of its un-
`patentability contentions.” AMC, 2021 WL 4470062, at *5
`(citing 35 U.S.C. § 312(a)(3); 37 C.F.R. §§ 42.22(a)(2),
`42.104(b)(4)–(5); Harmonic Inc. v. Avid Tech., Inc., 815
`F.3d 1356, 1363–64 (Fed. Cir. 2016); Ariosa, 805 F.3d at
`1367). 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 pre-
`determined set of permitted actions requested by the user.”
`
`

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`17
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`J.A. 2672 (emphasis added). It made its argument for that
`conclusion by detailing the components of an HTTP mes-
`sage 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. J.A. 2672–75. And it stressed that “[t]he ‘Method’
`field in the ‘Request-Line’ is the critical field for purposes
`of claim 4.” J.A. 2673 (citing Hethmon at 55). The whole
`point of this discussion was to convey that the claim re-
`quirement of an instant voice message that “includes an
`action field” of the specified sort was met by the HTTP mes-
`sage, and that meaning was strongly implied by the state-
`ment that the just-described arrangement “would have
`resulted in the voice container being carried in an
`HTTP/1.1 message that includes an ‘action field,’ e.g. the
`‘POST’ method.” J.A. 2675. All of this, fairly read, conveys
`that the HTTP message as a whole is an “instant voice mes-
`sage” meeting the claim 4 requirement. When Facebook,
`in its reply, was more explicit in so stating, see J.A. 2875
`(“[T]he Zydney voice container, transported as the payload
`of an HTTP message disclosing the claimed ‘instant voice
`message,’ would not contain any methods.” (emphasis
`added)), it was permissibly clarifying what it had said in
`the petition, not making a previously unmade point, see
`AMC, 2021 WL 4470062, at *6.
`The Board did not state, and Uniloc has not advanced,
`any contrary fair reading of the petition or reply passages.
`For exa