N OTE : This disposition is nonprecedential.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 No s . IPR2017

- 00221, IPR2017

- 01612, IPR2017

- 01636.

______________________
Decided: February 1 1 , 2021

______________________

J AMES E THERIDGE , Etheridge Law Group, Southlake, TX, for appellant. Also represented by R YAN S. L OVELESS , B RETT M ANGRUM , J EFFREY A. S TEPHENS

.

L AUREN B. F LETCHER , Wilmer Cutler Pickering Hale and Dorr LLP, Boston, MA, for appellee Apple Inc. Also represented by S. C ALVIN W ALDEN , New York, NY; B RITTANY B LUEITT A MADI , H EATH B ROOKS , Washington, DC. Case: 19-1197 Document: 76 Page: 1 Filed: 02/11/2021UNILOC 2017 LLC v. APPLE INC

. 2

H EIDI L YN K EEFE , Cooley LLP, Palo Alto, CA, for appellees Snap Inc., Facebook, Inc., WhatsApp, Inc . A lso represente d by M ARK R. W EINSTEIN

. Appellee Snap Inc. also represented by R EUBEN H O

- Y EN C HEN . Appellees Facebook, Inc., WhatsApp, Inc. also represented by L OWELL D. M EAD ; P HILLIP E DWARD M ORTON , Washington, DC.

______________________
Before L OURIE , W ALLACH , and C HEN , Circuit Judges

. W ALLACH , 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 Writt en 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, 201 8)

. 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. Case: 19-1197 Document: 76 Page: 2 Filed: 02/11/2021UNILOC 2017 LLC v. APPLE I NC

. 3

B ACKGROUND

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 co l. 1 ll. 7

– 1 1

. 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. Th us, the ’ 890patent 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. 4 0

– 49

. The ’ 890 patent ex plains that IVM clients are “VoIP telephone[s]” that “are commercially available from many vendors

, ” i d. 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[,] ” i d. col. 7 ll. 15

– 18

. The IVM client s 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

– 1 2 . 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 Case: 19-1197 Document: 76 Page: 3 Filed: 02/11/2021UNILOC 2017 LLC v. APPLE INC

. 4

message has been received and audibly play the instant voice message to an associated user. ” Id. col. 8 ll. 1 7

– 2 2

. The ’ 890 p atent explains, however, “that only the available IVM recipients, currently connected to the IVM serve r

. . . , 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 u navailable), 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. 2 2

– 29

. Independent claim 1 of the ’ 890 patent reci tes: An instant voice messaging system for delivering instant messages over a packet

- switched network, the system comprising:
a client connected to the network, the clientselecting 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 andthe instant voice message therefor, and delivering the inst ant voice message to the selected recipients over the network, the selected recipients enabled to audibly play the instant voice message, and the servertemporarily 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. 5 5

– col. 24 l. 3

. Independent claim 14 recites: Case: 19-1197 Document: 76 Page: 4 Filed: 02/11/2021UNILOC 2017 LLC v. APPLE I NC

. 5

An instant voice messaging system for delivering instant messages over a plurality of packet

switched network s , the system comprising:
a client connected to a local network, theclient selecting one or more external recipients connected to an external ne twork outside the local network, generating aninstant 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
t he server receiving the selected recipients and the instant voice message therefor, and delivering the instant voice message to theselected recipients over the external network, the selected recipients being enabled to audibly play the instant voice messa ge,and the server temporarily storing the instant voice message if a selected recipientis unavailable and delivering the stored instant voice message to the selected recipient once the selected recipient becomes available.

Id. col. 2 5 ll. 2 2

– 39

. Claim 1 6, 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: Case: 19-1197 Document: 76 Page: 5 Filed: 02/11/2021UNILOC 2017 LLC v. APPLE INC

. 6

An instant voice messaging system for delivering instant messages over a plurality of packet

switched network s , the system comprising:
a client connected to an external network, the c lient selecting one or more recipients connected to a local network, generating aninstant voice message therefor, and transmitting the selected recipients and the instant voice message therefor over the external network; and

a [n] external server system co nnected 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 c onnected 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 au dibly play the instant voice message, and the local server temporarilystoring the instant voice message if a selected recipient is unavailable and delivering the stored instant voice message to theselected recipient once the selected recipient becomes av ailable.

Id. col. 2 7 ll. 6

– 28

. Case: 19-1197 Document: 76 Page: 6 Filed: 02/11/2021UNILOC 2017 LLC v. APPLE I NC

. 7

I I . The Prior Art

A . Malik
Entitled “Voice Message Delivery Over Instant Messaging,” U.S. Patent No. 7,123,695 (“Malik”) “is generallyrelated to communications and, more particularly, is related to a system and method for relaying voice messages over a communication network.” J.A. 1 173 ; see J.A. 1 163

– 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. 1 163 . Malik explains that “[a] n instant messaging network recognizes when a user is [‘] pres ent ’ on the network. ” J.A. 1 173

. 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. 1 173

. 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 th e : first user is not present and/or available, the authorized user may be given the opportunity to generate a [VIM] f or the first user. ” J.A. 1 175

. 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. 1 181 ; see J.A. 1 181

– 217 ( Väänänen ). Väänänen describes

, in relevant part, “[a] user choos [ing] a recipient for a voi c e [] or video mail from the contacts book of the terminal [,] ” after which “[t]he terminal forms a data connection to a server[.]” J.A. 1 183

. 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 serve r for some time, and attempts to Case: 19-1197 Document: 76 Page: 7 Filed: 02/11/2021UNILOC 2017 LLC v. APPLE INC

. 8

deliver the message may be taken at timely intervals.” J.A. 1189.

D ISCUSSION

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 substantia l 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 suchrelevant 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 inc onsistent 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. Thal es 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 the ir broadest Case: 19-1197 Document: 76 Page: 8 Filed: 02/11/2021UNILOC 2017 LLC v. APPLE I NC

. 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 inlight of the specification of the patent in which it appears”). 3 The “specifi cation 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 P roperly 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 ap ply 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 “ consis ts of the complete record of the proceedings before the [US]PTO, ” which provid es “evidence of how the [US]PTO and the inventor understood the patent.” Phillips , 415 F.3d at 1317 (citations omitted). Case: 19-1197 Document: 76 Page: 9 Filed: 02/11/2021UNILOC 2017 LLC v. APPLE INC

. 10

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

. at 1 7 . We disagree with Uniloc.
The PTAB properly construed the term s “ 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 claim s 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 th e 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)

. Dependentclaim 16 recites the “instant voice messaging system” of independent claim 14, “wherein the local network is a network within an enterprise

. ” I d . co l. 25 ll. 52

– 54 (emphasis added ). D ependent claim 17 recites the “instant voice messaging system” of independent claim 14, “wherein the external network is the Internet

. ” I d . 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 Case: 19-1197 Document: 76 Page: 10 Filed: 02/11/2021UNILOC 2017 LLC v. APPLE I NC

. 11

one another. See , e.g. , i d . 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 “tra n smi[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 surroundi ng 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)

. Th ough 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

, s ee , e.g., col. 1 ll. 8

– 1 1 (stating that “the present invention is directed t o a system and
met h od for enabling local and global instant VoIP messaging over an IP network, such as the Internet”) (emphases added)

, col. 2 ll. 40

– 41 (de tailing 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 syste m comprising a local IVM system and global IVM clients” ) (emphases added )

. Consistent with the claim language, thespecification also repeatedly refers to an “external network” as located “ outside the local network.” Id . c ol. 3 ll. 2 9

– 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 ”) (emphas e s added)

, col. 3 ll. 46

– 47 (sa me)

, col. 3 ll. 64

– 65 (same)

, col. 5 Case: 19-1197 Document: 76 Page: 11 Filed: 02/11/2021UNILOC 2017 LLC v. APPLE INC

. 12

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 network s 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 propos ing 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

r espect 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

sco pe 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”). Case: 19-1197 Document: 76 Page: 12 Filed: 02/11/2021UNILOC 2017 LLC v. APPLE I NC

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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)

. C laim language must be considered in “the context of the surrounding words,” ACT V, 346 F.3d at 1088, and construed “in light of the [patent] specification,” Samsung

, 925 F.3d at 1376

. Here, t heclaim language describing an “external network” as “outside the local network ,” ’890 patent, col. 25 ll. 25

– 26, provides context as to the me aning of “external,” and is consistent with the broader specification ’s description of the claimed invention

, see i d . col. 3 ll. 2 4

– 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 claimdifferentiation” 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, 5 1, 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. 2 016); see also Hormone Research Found., Inc. v. Genentech, Inc. , 904 F.2d 1558, 1567 n.15 (Fed. Case: 19-1197 Document: 76 Page: 13 Filed: 02/11/2021UNILOC 2017 LLC v. APPLE INC

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the PTAB properly construed the terms “external network” and “local network” as “refer[ring] to networks of differing

geogr aphic 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 subjec t 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 u nderlying findings of fact include (1) “the scope and content of the prior art,” (2) the “differences between the prior art and theclaims at issue,” (3) “the level of ordinary skill in the pertinent art,” and (4) the presence of objective indicia of nonob viousness 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 a rt, the PTAB also “consider[s] whether a PHOSITA would have been motivated to combine the prior art to achieve the claimed inventionand whether there would have been a reasonable expectation of success in doing so.” In re Warsaw Orthopedic, Inc.

, 832 F.3 d 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 invo lved.”).

7 Congress amended § 10 3 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 Case: 19-1197 Document: 76 Page: 14 Filed: 02/11/2021UNILOC 2017 LLC v. APPLE I NC

. 15

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. Specificall y, the PTAB found that Väänänen discloses “t hat [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 di sclosed by Malik “ to indicate where to deliver the VIM based on the selected recipient information

. ” I d

. 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 o ver 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 indepe ndent claims 1 and 40, i d . 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

, s ee id. § 3(n)(1), 125 Stat. at 293. Case: 19-1197 Document: 76 Page: 15 Filed: 02/11/2021UNILOC 2017 LLC v. APPLE INC

. 16

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 l imitation directed to “transmittingthe 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 (cl aim 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 messageto 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 messagedelivery system,” wherein, in a representative embodiment, “the VIM clien t

. . . 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. “ A ccordingly

, 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 suppo rts 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

. Case: 19-1197 Document: 76 Page: 16 Filed: 02/11/2021UNILOC 2017 LLC v. APPLE I NC

. 17

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, a t *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 d etail

. . . 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 P HOSITA 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 explan ation 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 Case: 19-1197 Document: 76 Page: 17 Filed: 02/11/2021UNILOC 2017 LLC v. APPLE INC

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(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 thelocal 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 recipient s 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 re asons 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, 11 76), V äänänen (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

– 8 5 ).
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 cl ient 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 Case: 19-1197 Document: 76 Page: 18 Filed: 02/11/2021UNILOC 2017 LLC v. APPLE I NC

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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

. ” ). Petitioner s’ expert also testified that a PHOSITA “would have found it obvious to incorporate [Figure] 3’s Internet into [Figure] 2, such that aserver in [Figure] 2 could connect to its clients via the Internet.” J.A. 1084. Accordingly, substantial evidence suppo rts 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 bediscouraged from following the path set out in the reference, or would be led in a direction divergent from the path
t hat 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 des cribing 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, Case: 19-1197 Document: 76 Page: 19 Filed: 02/11/2021UNILOC 2017 LLC v. APPLE INC

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1201 (Fed. Cir. 2004)

. Accordingly, substantial evidence supports the PTAB’s finding that Malik and Väänänen render ed obvious the “transmitting the selected recipients” limitation recited in independent claims 1, 14, 28, 40, 51

, and 62. 8

C ONCLUSION

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 thatits sending and receiving clients use different types of networks for its voice messaging,” is predicated on us adoptingUniloc’s construction of “external network” and “local network.” Appellant’s Br. 21 (arguing that, “[i]n applying itserroneous claim construction, the [PTAB] failed to recognize a dispositive distinction between” Malik “and the various claim limitations directed to different types ofnetworks 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 dis puted limitation, we need not address the appellant’s conditional arguments as to thePTAB’s unpatentability determinations.” (internal quotation marks, brackets, and citation omitted)). Case: 19-1197 Document: 76 Page: 20 Filed: 02/11/2021