NOTE: This disposition is nonprecedential.

United States Court of Appeals 

for the Federal Circuit ______________________

UNILOC 2017 LLC,

Appellant

v.

APPLE INC., SNAP INC., FACEBOOK, INC., 

WHATSAPP, INC.,

Appellees

______________________

2019-1197

______________________

Appeal from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in Nos. IPR2017-

00221, IPR2017-01612, IPR2017-01636.

______________________

Decided: February 11, 2021

______________________

JAMES ETHERIDGE, Etheridge Law Group, Southlake, 

TX, for appellant. Also represented by RYAN S. LOVELESS,

BRETT MANGRUM, JEFFREY A. STEPHENS.

 LAUREN B. FLETCHER, Wilmer Cutler Pickering Hale 

and Dorr LLP, Boston, MA, for appellee Apple Inc. Also 

represented by S. CALVIN WALDEN, New York, NY; 

BRITTANY BLUEITT AMADI, HEATH BROOKS, Washington, 

DC.

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2 UNILOC 2017 LLC v. APPLE INC.

 HEIDI LYN KEEFE, Cooley LLP, Palo Alto, CA, for appellees Snap Inc., Facebook, Inc., WhatsApp, Inc. Also represented by MARK R. WEINSTEIN. Appellee Snap Inc. also 

represented by REUBEN HO-YEN CHEN. Appellees Facebook, Inc., WhatsApp, Inc. also represented by LOWELL D.

MEAD; PHILLIP EDWARD MORTON, Washington, DC.

 ______________________

Before LOURIE, WALLACH, and CHEN, Circuit Judges.

WALLACH, Circuit Judge. 

Appellee, Apple Inc. (“Apple”), sought inter partes review (“IPR”) of claims 1–6, 14, 15, 17–20, 28, 29, 31–34, 40–

43, 51–54, 62–65, and 68 (collectively, “the Challenged 

Claims”) of U.S. Patent No. 7,535,890 (“the ’890 patent”), 

owned by Appellant, Uniloc 2017 LLC (“Uniloc”).1 The 

United States Patent and Trademark Office’s (“USPTO”) 

Patent Trial and Appeal Board (“PTAB”) issued a final 

written decision (“the Final Written Decision”), concluding 

that Petitioners had “establishe[d], by a preponderance of 

the evidence, that all [the C]hallenged [C]laims . . . are unpatentable.” Apple Inc. v. Uniloc USA, Inc., No. IPR2017-

00221, 2018 WL 4210334, at *21 (P.T.A.B. May 23, 2018).2

Uniloc appeals. We have jurisdiction pursuant to 

28 U.S.C. § 1295(a)(4)(A). We affirm.

1 Appellees, Snap Inc. (“Snap”), Facebook, Inc. (“Facebook”), and WhatsApp Inc. (“WhatsApp”), were subsequently joined to the instant IPR as petitioners along with 

Apple (collectively, “Petitioners”). J.A. 105, 123. 

2 While the Final Written Decision lists Uniloc USA, 

Inc. and Uniloc Luxembourg S.A. as the “Patent Owner,” 

Apple, 2018 WL 4210334, at *1, the Patent Owner’s Notice 

of Appeal states that Uniloc 2017 LLC now owns the ’890 

patent, ECF No. 1, Doc. 2 at 1. 

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UNILOC 2017 LLC v. APPLE INC. 3

BACKGROUND 

I. The ’890 Patent 

Entitled “System and Method for Instant [Voice over 

Internet Protocol (‘VoIP’)] Messaging,” the ’890 patent 

“generally relates to Internet telephony (IP telephony)” 

and “[m]ore particularly . . . to a system and method for enabling local and global instant VoIP messaging over an [Internet Protocol (‘IP’)] network, such as the Internet[.]” ’890

patent col. 1 ll. 7–11. The ’890 patent states that while 

“[v]oice messaging” and “[i]nstant text messaging” in VoIP 

are “known” in the prior art, id. col. 2 ll. 11–23, “there is a 

need in the art for providing local and global instant voice 

messaging over VoIP,” id. col. 2 ll. 40–41. Thus, the ’890

patent discloses a “local instant voice messaging (IVM) system” comprising a “local IVM server . . . enabled to provide 

instant voice messaging to one or more IVM clients[.]” Id.

col. 6 ll. 40–49. 

The ’890 patent explains that IVM clients are “VoIP 

telephone[s]” that “are commercially available from many 

vendors,” id. col. 7 ll. 14–25, and “which comprise[] a screen 

display . . . capable of displaying instant voice messages 

recorded and/or received by a user of the IVM client[,]” id.

col. 7 ll. 15–18. The IVM clients may “display[] a list of one 

or more IVM recipients” from which a user selects “one or 

more IVM recipients[.]” Id. col. 8 ll. 43–48. When in a “record mode,” “[t]he user selection . . . generates a start signal 

to the IVM client” and “[i]n response . . . , the IVM client . . . records the user’s speech into a digitized audio 

file . . . (i.e., instant voice message) stored on the IVM client[.]” Id. col. 7 l. 47–col. 8 l. 1. “Once the recording of the 

user’s speech is finalized, . . . [t]he user generates [a] send 

signal” and “[t]he IVM client . . . transmits the digitized audio file . . . to the local IVM server[.]” Id. col. 8 ll. 1–12. The 

local IVM server “delivers the transmitted instant voice 

message to the selected one or more recipients” which “are 

enabled to display an indication that the instant voice 

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4 UNILOC 2017 LLC v. APPLE INC.

message has been received and audibly play the instant 

voice message to an associated user.” Id. col. 8 ll. 17–22. 

The ’890 patent explains, however, “that only the available 

IVM recipients, currently connected to the IVM server . . . , 

will receive the instant voice message” and “that if a recipient IVM client is not currently connected to the local IVM 

server . . . (i.e., is unavailable), the IVM server temporarily 

saves the instant voice message and delivers it to the IVM 

client when the IVM client connects to the local IVM 

server . . . (i.e., is available).” Id. col. 8 ll. 22–29. 

Independent claim 1 of the ’890 patent recites: 

An instant voice messaging system for delivering 

instant messages over a packet-switched network, 

the system comprising:

a client connected to the network, the client 

selecting one or more recipients, generating an instant voice message therefor, and 

transmitting the selected recipients and 

the instant voice message therefor over the 

network; and

a server connected to the network, the 

server receiving the selected recipients and 

the instant voice message therefor, and delivering the instant voice message to the selected recipients over the network, the 

selected recipients enabled to audibly play 

the instant voice message, and the server 

temporarily storing the instant voice message if a selected recipient is unavailable 

and delivering the stored instant voice 

message to the selected recipient once the 

selected recipient becomes available.

Id. col. 23 l. 55–col. 24 l. 3. Independent claim 14 recites:

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UNILOC 2017 LLC v. APPLE INC. 5

An instant voice messaging system for delivering 

instant messages over a plurality of packetswitched networks, the system comprising: 

a client connected to a local network, the 

client selecting one or more external recipients connected to an external network outside the local network, generating an 

instant voice message therefor, and transmitting the selected recipients and the instant voice message therefor over the local 

network and the external network; and

a server connected to the external network 

the server receiving the selected recipients 

and the instant voice message therefor, and 

delivering the instant voice message to the 

selected recipients over the external network, the selected recipients being enabled 

to audibly play the instant voice message, 

and the server temporarily storing the instant voice message if a selected recipient 

is unavailable and delivering the stored instant voice message to the selected recipient once the selected recipient becomes 

available.

Id. col. 25 ll. 22–39. Claim 16, which depends from independent claim 14, further recites:

[W]herein the local network is a network within an 

enterprise. 

Id. col. 25 ll. 52–54. Claim 17, which also depends from 

independent claim 14, further recites:

[W]herein the external network is the Internet. 

Id. col. 25 ll. 55–56. Independent claim 28 recites: 

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6 UNILOC 2017 LLC v. APPLE INC.

An instant voice messaging system for delivering 

instant messages over a plurality of packetswitched networks, the system comprising: 

a client connected to an external network, 

the client selecting one or more recipients 

connected to a local network, generating an 

instant voice message therefor, and transmitting the selected recipients and the instant voice message therefor over the 

external network; and

a[n] external server system connected to 

the external network, the external server 

system receiving the selected recipients 

and the instant voice message, and routing 

the selected recipients and the instant 

voice message over the external network 

and the local network.

a local server connected to the local network the local server receiving the selected 

recipients and the instant voice message 

therefor, and delivering the instant voice 

message to the selected recipients over the 

local network, the selected recipients being 

enabled to audibly play the instant voice 

message, and the local server temporarily 

storing the instant voice message if a selected recipient is unavailable and delivering the stored instant voice message to the 

selected recipient once the selected recipient becomes available.

Id. col. 27 ll. 6–28. 

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UNILOC 2017 LLC v. APPLE INC. 7

II. The Prior Art 

A. Malik 

Entitled “Voice Message Delivery Over Instant Messaging,” U.S. Patent No. 7,123,695 (“Malik”) “is generally 

related to communications and, more particularly, is related to a system and method for relaying voice messages 

over a communication network.” J.A. 1173; see J.A. 1163–

80 (Malik). Malik discloses “a system and method for sending voice instant messages [(‘VIMs’)],” and “includes a communications client of a user that is configured to generate 

a [VIM] and send a [VIM] to another user.” J.A. 1163. Malik explains that “[a]n instant messaging network recognizes when a user is [‘]present’ on the network.” J.A. 1173. 

As a result, “the network sends [a] notification to other users (usually members of a ‘buddy list’ or ‘contact list’) that 

are also logged on the network that the user is ‘present.’” 

J.A. 1173. In relevant part, Malik describes an exemplary 

system or method whereby “when an authorized user attempts to send an instant message to [a] first user and the:

first user is not present and/or available, the authorized 

user may be given the opportunity to generate a [VIM] for 

the first user.” J.A. 1175. 

B. Väänänen

Entitled “Instant Video- and Voicemail Messaging 

Method and Means,” WIPO Pub. No. WO 02/17658 

(“Väänänen”) discloses “a server[-]centric method and 

means for instant voice and video mail messaging.” 

J.A. 1181; see J.A. 1181–217 (Väänänen). Väänänen describes, in relevant part, “[a] user choos[ing] a recipient for 

a voice[] or video mail from the contacts book of the terminal[,]” after which “[t]he terminal forms a data connection 

to a server[.]” J.A. 1183. Väänänen explains that the message is then recorded and “store[d] . . . to a database.” 

J.A. 1184. “If the recipient is unavailable, the message 

may be stored on the server for some time, and attempts to 

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8 UNILOC 2017 LLC v. APPLE INC.

deliver the message may be taken at timely intervals.” 

J.A. 1189.

DISCUSSION 

Uniloc argues that the PTAB did not properly construe

the terms “local network” and “external network” recited in 

claims 14, 16, 17, 28, 31, 51, and 62 of the ’890 patent. Appellant’s Br. 12–21. Uniloc also challenges, as unsupported 

by substantial evidence, the PTAB’s determinations that

independent claims 1, 14, 28, 40, 51, and 62 would have 

been obvious over Malik and Väänänen. Id. at 5–12. After 

stating the applicable standard of review, we address each 

argument in turn. 

I. Standard of Review

“We review the PTAB’s factual findings for substantial 

evidence and its legal conclusions de novo.” Redline Detection, LLC v. Star Envirotech, Inc., 811 F.3d 435, 449 (Fed. 

Cir. 2015) (citation omitted). “Substantial evidence is 

something less than the weight of the evidence but more 

than a mere scintilla of evidence,” meaning that “[i]t is such 

relevant evidence as a reasonable mind might accept as adequate to support a conclusion.” In re NuVasive, Inc., 842 

F.3d 1376, 1379–80 (Fed. Cir. 2016) (internal quotation 

marks and citations omitted). “If two inconsistent conclusions may reasonably be drawn from the evidence in record, the PTAB’s decision to favor one conclusion over the 

other is the epitome of a decision that must be sustained 

upon review for substantial evidence.” Elbit Sys. of Am., 

LLC v. Thales Visionix, Inc., 881 F.3d 1354, 1356 (Fed. 

Cir. 2018) (internal quotation marks, brackets, and citation omitted).

II. Claim Construction 

A. Legal Standard 

At the time the IPR petition was filed in this case, the 

PTAB construed claims according to their broadest 

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UNILOC 2017 LLC v. APPLE INC. 9

reasonable interpretation (“BRI”) in light of the specification. See Samsung Elecs. Co., Ltd. v. Elm 3DS Innovations, 

LLC, 925 F.3d 1373, 1376 (Fed. Cir. 2019) (citing 37 C.F.R. 

§ 42.100(b) (2017)) (“The [PTAB] construes claims in an unexpired patent according to their [BRI] in light of the specification.”); 37 C.F.R. § 42.100(b) (providing that the PTAB 

gives “[a] claim . . . its broadest reasonable construction in 

light of the specification of the patent in which it appears”).3 The “specification includes both the written description and the claims of the patent.” Cisco Sys., Inc. v. 

TQ Delta, LLC, 928 F.3d 1359, 1362 (Fed. Cir. 2019) (internal quotation marks and citation omitted). “A patent’s 

specification, together with its prosecution history, constitutes intrinsic evidence to which the PTAB gives priority 

when it construes claims.” Knowles Elecs. LLC v. Cirrus 

Logic, Inc., 883 F.3d 1358, 1361−62 (Fed. Cir. 2018) (citation omitted).4 We review the PTAB’s assessment of the 

intrinsic evidence de novo. See id. at 1362. 

B. The PTAB Properly Construed the Terms 

“External Network” and “Local Network”

The PTAB concluded that “there is a difference between the terms” “external network” and “local network” 

3 Although the USPTO has revised its claim construction standard consistent with the standard set forth 

in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) 

(en banc), and its progeny, we apply the BRI standard in 

this case, as Apple filed the IPR petition giving rise to this 

case before November 13, 2018. J.A. 260; see 83 Fed. 

Reg. 51,340, 51,358 (Oct. 11, 2018) (codified at 37 C.F.R. 

§ 42.100(b)). 

4 A patent’s prosecution history “consists of the complete record of the proceedings before the [US]PTO,” which 

provides “evidence of how the [US]PTO and the inventor 

understood the patent.” Phillips, 415 F.3d at 1317 (citations omitted).

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10 UNILOC 2017 LLC v. APPLE INC.

recited in claims 14, 16, 17, 28, 31, 51, and 62 of the ’890 

patent “in that they refer to networks of differing geographic scope relative to each other.” Apple, 2018 WL

4210334, at *5. The PTAB explained that because its obviousness analysis did “not require a complete, explicit construction of either term,” it addressed their construction 

“only to the extent necessary to resolve the issues in this 

case.” Id. Uniloc argues that the PTAB erred “by adopting 

its construction sua sponte for the first time in its Final 

Written Decision,” Appellant’s Br. 13, and that its construction renders other claim language “superfluous,” id. 

at 17. We disagree with Uniloc.

The PTAB properly construed the terms “external network” and “local network” as recited in the Challenged 

Claims. We begin our analysis with the claim language. 

See In re Power Integrations, Inc., 884 F.3d 1370, 1376 

(Fed. Cir. 2018) (“Claim construction must begin with the 

words of the claims themselves.” (internal quotations, 

brackets, and citation omitted)). Independent claim 14 recites, in relevant part, “a client connected to a local network, the client selecting one or more external recipients 

connected to an external network outside the local network, . . . transmitting the selected recipients and the instant voice message . . . over the local network and the 

external network,” and “a server connected to the external 

network, the server . . . delivering the instant voice message to the selected recipient over the external network.” 

’890 patent col. 25 ll. 24–33 (emphases added). Dependent 

claim 16 recites the “instant voice messaging system” of independent claim 14, “wherein the local network is a network within an enterprise.” Id. col. 25 ll. 52–54 (emphasis 

added). Dependent claim 17 recites the “instant voice messaging system” of independent claim 14, “wherein the external network is the Internet.” Id. col. 25 ll. 55–56

(emphasis added). Thus, a plain reading of the claim language, in its full context, indicates that the “external network” and “local network” are geographically distinct from 

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UNILOC 2017 LLC v. APPLE INC. 11

one another. See, e.g., id. col. 25 ll. 25–26 (referring to the 

“external network” as located “outside the local network”)

(emphasis added); col. 27 ll. 9–23 (reciting the 

“transmi[ssion] [of] the selected recipients and the [IVM]” 

from the “external network” to the “local network”); see 

ACTV, Inc. v. Walt Disney Co., 346 F.3d 1082, 1088 (Fed. 

Cir. 2003) (“[T]he context of the surrounding words of the 

claim also must be considered in determining the ordinary 

and customary meaning of those terms.”). Thus, the claim 

language supports the conclusion that the “local network” 

and the “external network” recited in the Challenged 

Claims refer to networks of differing geographic scope. 

We turn next to the broader specification. Trs. of Columbia Univ. v. Symantec Corp., 811 F.3d 1359, 1363 (Fed. 

Cir. 2016). Though the specification does not explicitly define “external network” and “local network,” see generally

’890 patent, it repeatedly uses the words “global” and “external,” in contrast with the word “local,” to describe terms

in relation to one another, see, e.g., col. 1 ll. 8–11 (stating 

that “the present invention is directed to a system and 

method for enabling local and global instant VoIP messaging over an IP network, such as the Internet”) (emphases 

added), col. 2 ll. 40–41 (detailing the “need in the art for 

providing local and global instant voice messaging over 

VoIP”) (emphases added), col. 5 ll. 27–29 (describing 

“transmi[ssion] . . . over the local network and the external

network”) (emphases added), col. 6 ll. 21–22 (stating that 

Figure 5 “illustrates an exemplary global IVM system comprising a local IVM system and global IVM clients”) (emphases added). Consistent with the claim language, the 

specification also repeatedly refers to an “external network” as located “outside the local network.” Id. col. 3 

ll. 29–30 (emphasis added); see id. col. 3 ll. 24–30 (describing an “embodiment of the present invention,” in which a 

client selects “one or more external recipients connected to 

an external network outside the local network”) (emphases 

added), col. 3 ll. 46–47 (same), col. 3 ll. 64–65 (same), col. 5 

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12 UNILOC 2017 LLC v. APPLE INC.

ll. 4–6 (same). Thus, as with the plain language of the 

Challenged Claims, the specification supports the conclusion that the “local network” and the “external network” 

recited in the Challenged Claims refer to networks of differing geographic scope.5

Uniloc’s counterarguments are unpersuasive. First, 

Uniloc argues that the PTAB “adopt[ed] its construction 

sua sponte for the first time in its Final Written Decision, 

without having first given Uniloc the opportunity to brief 

counter[-]arguments.” Appellant’s Br. 13. Uniloc’s argument is inaccurate. The parties briefed the claim construction issue, J.A. 194–95 (Apple proposing a construction of 

“external network” as “a network that is outside another 

network,” and arguing that “[t]he claims recite ‘an external 

network outside the local network’”), 340 (Uniloc arguing 

that “the words ‘local’ and ‘external’ refer to distinct types

of networks”), and heard argument on the issue at the IPR 

hearing, J.A. 476 (Apple arguing that “a local network is 

strictly a geographic network based on a distance between 

a server and a client and that it is a relative location with 

respect to the external [network]”) (emphasis added), 504–

17 (Uniloc arguing that “external” and “local” refers to the 

network’s “type”).

Second, Uniloc argues that construing “the qualifier 

‘external’” as referring to “a network of differing geographic 

scope relative to the local network” would render the claim 

language’s recitation of an “external network” as located 

5 Neither Petitioners nor Uniloc relied on any portion of the ’890 patent’s prosecution history to support their 

respective constructions of “external network” and “local 

network.” See generally Appellant’s Br. 12–21; Appellee’s 

Br. 44–6; and Reply Br. 8–17. Accordingly, we do not consider it. See Vitronics Corp. v. Conceptronic, Inc., 90 

F.3d 1576, 1582 (Fed. Cir. 1996) (providing that we will 

consider the prosecution history “if in evidence”).

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“outside the local network” superfluous. Appellant’s Br. 17 

(internal quotation marks and alterations omitted); see

Power Mosfet Techs., L.L.C. v. Siemens AG, 378 F.3d 1396, 

1410 (Fed. Cir. 2004) (“[I]nterpretations that render some 

portion of the claim language superfluous are disfavored.”). 

This argument is without merit. “The preference for giving 

meaning to all terms . . . is not an inflexible rule that supersedes all other principles of claim construction.” SimpleAir, Inc. v. Sony Ericsson Mobile Commc’ns AB, 820 

F.3d 419, 429 (Fed. Cir. 2016). Claim language must be 

considered in “the context of the surrounding words,”

ACTV, 346 F.3d at 1088, and construed “in light of the [patent] specification,” Samsung, 925 F.3d at 1376. Here, the

claim language describing an “external network” as “outside the local network,” ’890 patent, col. 25 ll. 25–26, provides context as to the meaning of “external,” and is 

consistent with the broader specification’s description of 

the claimed invention, see id. col. 3 ll. 24–30 (describing an 

“embodiment of the present invention” as “comprising . . .

an external network outside the local network”).6 Thus, 

6 Uniloc similarly argues that “[t]he doctrine of claim 

differentiation” refutes the PTAB’s construction, contending that because “[n]ot all [the challenged] claims which recite ‘external network’ further limit that term with the 

phrase ‘outside the local network,’ . . . construing the qualifier ‘external” as referring to a network’s relative geographic scope “risks impermissibly importing features of 

one claim into another.” Appellant’s Br. 18. This argument 

fails to persuade us. The phrase “external network outside 

the local network” appears only in independent claims 14, 

27, 51, 60, and 61, ’890 patent col. 25 l. 26–col. 31 l. 53, and 

“we have declined to apply the doctrine of claim differentiation where, as here, the claims are not otherwise identical 

in scope,” Indacon, Inc. v. Facebook, Inc., 824 F.3d 1352, 

1358 (Fed. Cir. 2016); see also Hormone Research Found., 

Inc. v. Genentech, Inc., 904 F.2d 1558, 1567 n.15 (Fed. 

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14 UNILOC 2017 LLC v. APPLE INC.

the PTAB properly construed the terms “external network” 

and “local network” as “refer[ring] to networks of differing 

geographic scope relative to each other.” Apple, 2018 

WL 4210334, at *5.

III. Obviousness 

A. Legal Standard 

A patent claim is invalid as obvious “if the differences 

between the subject matter sought to be patented 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 

[PHOSITA].” 35 U.S.C. § 103(a). Obviousness is a question 

of law based on underlying findings of fact. See In re Gartside, 203 F.3d 1305, 1316 (Fed. Cir. 2000). Those underlying findings of fact include (1) “the scope and content of the 

prior art,” (2) the “differences between the prior art and the 

claims at issue,” (3) “the level of ordinary skill in the pertinent art,” and (4) the presence of objective indicia of nonobviousness such “as commercial success, long felt but 

unsolved needs, failure of others,” and unexpected results. 

Graham v. John Deere Co. of Kan. City, 383 U.S. 1, 17 

(1966); see United States v. Adams, 383 U.S. 49, 50–52 

(1966). In assessing the prior art, the PTAB also “consider[s] whether a PHOSITA would have been motivated 

to combine the prior art to achieve the claimed invention 

and whether there would have been a reasonable expectation of success in doing so.” In re Warsaw Orthopedic, 

Inc., 832 F.3d 1327, 1333 (Fed. Cir. 2016) (internal quotation marks, brackets, and citation omitted).7

Cir. 1990) (“It is not unusual that separate claims may define the invention using different terminology, especially 

where (as here) independent claims are involved.”). 

7 Congress amended § 103 when it passed the AIA. 

Pub. L. No. 112-29, § 3(b)(1), 125 Stat. at 285–87. However, 

because neither the ’890 patent nor the application that led 

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B. Substantial Evidence Supports the PTAB’s Conclusion 

that Malik and Väänänen Render Obvious the 

“Transmitting the Selected Recipients” Limitation of

Independent Claims 1, 14, 28, 40, 51, and 62

The PTAB concluded, inter alia, that Malik and 

Väänänen render obvious the “transmitting the selected recipients” limitation of independent claims 1, 14, 28, 40, 51,

and 62. Apple, 2018 WL 4210334, at *16–17. Specifically, 

the PTAB found that Väänänen discloses “that [a] subscriber terminal sends the contact information of the recipient to the server,” and that “a [PHOSITA] would have 

found it obvious to incorporate this teaching into” the voice 

message delivery system disclosed by Malik “to indicate 

where to deliver the VIM based on the selected recipient 

information.” Id. at *16 (internal quotation marks and citation omitted). Uniloc contends, however, that: (1) the 

PTAB “provided no explanation for why it concluded Apple 

met its burden to prove” the limitations recited by independent claims 14 and 51 invalid, Appellant’s Br. 5; (2) that 

Malik does not teach transmitting or routing the selected 

recipients and the instant voice message over the local network and the external network, as recited by independent 

claims 14, 28, 51, and 62, id. at 5–9; and (3) that Malik 

“teaches away” from allowing “the generating/transmitting 

client to select and transmit one or more recipients for an 

[IVM],” as recited by independent claims 1 and 40, id. at 9. 

We disagree with Uniloc.

Substantial evidence supports the PTAB’s conclusion 

that the “transmitting the selected recipients” limitation 

to the ’890 patent ever contained a claim having an effective filing date on or after March 16, 2013, or a reference 

under 35 U.S.C. §§ 120, 121, or 365(c) to any patent or application that ever contained such a claim, ’890 patent, Title Page, pre-AIA § 103 applies, see id. § 3(n)(1), 125 Stat. 

at 293. 

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16 UNILOC 2017 LLC v. APPLE INC.

recited in independent claims 1, 14, 28, 40, 51, and 62

would have been obvious in view of Malik and Väänänen. 

First, substantial evidence supports the PTAB’s conclusion 

that Malik and Väänänen teach the “transmitting the selected recipients” limitation. Independent claims 1, 14, 28, 

40, and 62 all recite a limitation directed to “transmitting 

the selected recipients and the instant voice message therefor[.]” ’890 patent col. 23 ll. 60–61 (claim 1), col. 25 ll. 27–

28 (claim 14), col. 27 ll. 11–13 (claim 28), col. 28 ll. 27–28

(claim 40), col. 32 ll. 13–14 (claim 62). Independent 

claim 51 similarly recites a limitation directed to “transmitting the selected external recipients and the instant 

voice message therefor[.]” Id. col. 30 ll. 16–17. Väänänen, 

in turn, discloses that “[t]he subscriber terminal sends the 

contact information of the recipient to the server,” 

J.A. 1183, following which “the server relays the message 

to the recipient(s) through the Internet or telephony network,” J.A. 1188. Väänänen further discloses that the 

“[t]he recipient contact information may comprise the telephone number, static or dynamic IP-address,” among other 

information. J.A. 1187. Malik discloses a “voice message 

delivery system,” wherein, in a representative embodiment, “the VIM client . . . is configured to receive and play 

a voice recording . . . in a [VIM] it receives from other users, 

such as a second user.” J.A. 1174. Malik teaches that 

“[e]ach VIM client . . . communicates with . . . a VIM 

server . . . via the Internet or some other communication 

network.” J.A. 1174. “Accordingly, the VIM server . . . includes the capabilities of conventional IM servers and the 

additional capabilities for handling VIM message delivery 

and storage.” J.A. 1174. Thus, substantial evidence supports the PTAB’s conclusion that Väänänen’s method of 

sending a recipient’s contact information to a server and 

Malik’s voice message delivery system render obvious the 

“transmitting the selected recipients” limitation of independent claims 1, 14, 28, 40, 51, and 62.

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Second, substantial evidence supports the PTAB’s conclusion that a PHOSITA would have been motivated to 

combine Malik’s voice message delivery system and 

Väänänen’s method of sending a recipient’s contact information. Apple, 2018 WL 4210334, at *12. Petitioners’ expert explained that though “Malik discloses [that a] ‘VIM 

client . . . of the second user receives a request or prompt 

by the second user to send an [IM] to the first user,’” 

J.A. 1072 (citing J.A. 1175), “Malik does not explain in detail . . . how the second user . . . could input information . . . 

to designate the first user” as the recipient, and thus “a 

PHOSITA would be motivated to seek out ways in which a 

user could input information designating a recipient[] . . . 

for example, by using the well-known teachings in 

Väänänen,” J.A. 1072. The PTAB, considering the testimony of the parties’ respective experts, credited Petitioners’ expert, Apple, 2018 WL 4210334, at *11, “and 

conclude[d] that a preponderance of the evidence supports

a finding that a [PHOSITA] would have found it obvious to 

combine Malik’s system with Väänänen’s disclosed methods of recipient selection,” id. at 12. “We find no error in 

the [PTAB]’s decision to credit the opinion of [Petitioners’]

expert . . . , and we do not reweigh evidence on appeal.” Apple Inc. v. Voip-Pal.com, Inc., 976 F.3d 1316, 1325 (Fed. 

Cir. 2020). Accordingly, substantial evidence supports the 

PTAB’s conclusion that a PHOSITA would have been motivated to combine Malik’s voice message delivery system

and Väänänen’s method of sending a recipient’s contact information. 

Uniloc’s counterarguments are unpersuasive. First, 

Uniloc argues that that the PTAB “provided no explanation 

for why it concluded [Petitioners] met [their] burden to 

prove” the limitations recited by independent claims 14 

and 51 invalid, “apart from offering an unexplained citation to a single page of the Petition and a paragraph” of an 

attached declaration. Appellant’s Br. 5–6 (internal quotation marks omitted) (citing J.A. 43); see Appellant’s Br. 5

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18 UNILOC 2017 LLC v. APPLE INC.

(referencing independent claim 14’s limitations “directed to 

‘a client connected to a local network, . . . one or more external recipients connected to an external network, [and 

the client] transmitting the selected recipients . . . over the 

local network and the external network” (citing ’890 patent, col. 25 ll. 24–29)), 7 (referencing independent 

claim 51’s recitation of “transmitting the selected external

recipients and the instant voice message therefor over the 

local network and the external network” (citing ’890 patent, col. 30 ll. 16–18)). Yet again, Uniloc’s statement is 

inaccurate. On the page Uniloc cites, the PTAB stated:

“[i]n addition to the reasons discussed above, we specifically find . . . that Malik and Väänänen render obvious ‘a 

client connected to a local network,’” Apple, 2018 WL 

4210334, at *17 (citing to the IPR Petition (J.A. 219, 223), 

Apple’s Reply (J.A. 391–92), Malik (J.A. 1174, 1176), 

Väänänen (J.A. 1196–97), and Petitioners’ expert’s testimony (J.A. 1079–80)); “‘one or more external recipients 

connected to an external network,’” id. (citing the IPR petition (J.A. 223–24), Malik (J.A. 1174), and Petitioners’ expert’s testimony (J.A. 1083)), “and ‘the client . . . 

transmitting the selected recipients and the [IVM] therefor 

over the local network and the external network,’” id. (citing the IPR Petition (J.A. 225) and Petitioners’ expert’s testimony (J.A. 1084–85).

Second, Uniloc argues that Malik does not teach transmitting or routing the selected recipients and the instant 

voice message over the local network “and” the external 

network, as recited by independent claims 14, 28, 51, 

and 62. Appellant’s Br. 5–9 (emphasis added). This argument is unavailing. Figure 2 of Malik depicts a “prior art 

IM network” using a “Jabber” network architecture, 

wherein “[e]ach Jabber client . . . is attached to a local Jabber server[.]” J.A. 1173–74. Figure 2 shows “Jabber client 

200” connected to “Jabber client 215,” which Malik states 

is a “local IM server.” J.A. 1174. Malik states that, in a 

preferred embodiment, “VIM client 310” of Figure 3

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“communicates with a VIM server 330 via the Internet, or 

some other communication network.” J.A. 1174; see ’890 

patent, col. 25 ll. 55–56 (describing “the Internet” as an “external network”); J.A. 1083 (Petitioners’ expert testifying 

that “Malik explicitly teaches using the Internet, which is 

a type of external network.”). Petitioners’ expert also testified that a PHOSITA “would have found it obvious to incorporate [Figure] 3’s Internet into [Figure] 2, such that a 

server in [Figure] 2 could connect to its clients via the Internet.” J.A. 1084. Accordingly, substantial evidence supports the PTAB’s finding that “a [PHOSITA] would have 

found it obvious to implement, using known methods, the 

connections of Malik’s Figure 2 using a combination of local 

and external networks[.]” Apple, 2018 WL 4210334, at *15

(emphasis added).

Third, Uniloc argues that “[t]he [PTAB] erred in not 

recognizing” that Malik “teaches away” from allowing “the 

generating/transmitting client to select and transmit one 

or more recipients for an [IVM].” Appellant’s Br. 9; see 

Ricoh Co. v. Quanta Computer Inc., 550 F.3d 1325, 1332 

(Fed. Cir. 2008) (“A reference may be said to teach away 

when a [PHOSITA], upon reading the reference, would be 

discouraged from following the path set out in the reference, or would be led in a direction divergent from the path 

that was taken by the applicant.” (internal quotation 

marks and citation omitted)). Uniloc contends that, because Malik discloses a system “designed to exchange a 

VIM responsively to a VIM invitation,” Appellant’s Br. 9–

10 (internal quotation marks omitted), “the Malik system, 

by design, leaves control in the hands of the (receiving) first 

user” who sends the invitation, and not the transmitting 

“second user,” id. at 11. This argument is without merit. 

Malik discusses “accepting a VIM invitation” when describing Figure 3, “one representative embodiment, among others, of a voice message delivery system[.]” J.A. 1174. 

“[The] mere disclosure of alternative designs” in the prior 

art “does not teach away.” In re Fulton, 391 F.3d 1195, 

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20 UNILOC 2017 LLC v. APPLE INC.

1201 (Fed. Cir. 2004). Accordingly, substantial evidence 

supports the PTAB’s finding that Malik and Väänänen rendered obvious the “transmitting the selected recipients” 

limitation recited in independent claims 1, 14, 28, 40, 51,

and 62.8

CONCLUSION 

We have considered the parties’ remaining arguments 

and find them unpersuasive. Accordingly, the Final Written Decision of the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board is 

AFFIRMED

8 Uniloc’s argument that Malik “does not teach that 

its sending and receiving clients use different types of networks for its voice messaging,” is predicated on us adopting 

Uniloc’s construction of “external network” and “local network.” Appellant’s Br. 21 (arguing that, “[i]n applying its 

erroneous claim construction, the [PTAB] failed to recognize a dispositive distinction between” Malik “and the various claim limitations directed to different types of 

networks recited as a ‘local network’ and an ‘external network’”). Because we do not adopt Uniloc’s construction, we 

need not address Uniloc’s conditional argument. See 

Knowles Elecs. LLC v. Iancu, 886 F.3d 1369, 1373 n.3 (Fed. 

Cir. 2018) (“Because we conclude that the PTAB did not err 

in its construction of the disputed limitation, we need not 

address the appellant’s conditional arguments as to the 

PTAB’s unpatentability determinations.” (internal quotation marks, brackets, and citation omitted)).

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