N OTE : This disposition is nonprecedential. 

# United States **Court of Appeals**  **for the Federal Circuit**

______________________ SLING TV, L.L.C., Appellant

v.

UNILOC 2017 LLC, Appellee

______________________

2021

- 1651

______________________ Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. IPR2019

- 01363.

______________________

Decided: February 2, 2022

______________________

E LIOT D AMON W ILLIAMS , Baker Botts LLP, Palo Alto, CA, argued for appellant. Also represented by G EORGE H OPKINS G UY , III ; A LI D HANANI , Houston, TX, K URT M. P ANKRATZ , Dallas, TX.

N ATHAN K. C UMMINGS , Etheridge Law Group, Southlake, TX, argued for appellee. Also represented by J AMES E THERIDGE , B RIAN M ATTHEW K OIDE , R YAN S. L OVELESS , B RETT M ANGRUM

.

______________________ Case: 21-1651 Document: 35 Page: 1 Filed: 02/02/2022SLING TV , L

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Before L OURIE , D YK , and R EYNA , Circuit Judges

. D YK , Circuit Judge
Sling TV

, L.L.C. (“Sling”) appeals an inter partes review decision of the Patent Trial and Appeal Board (“ Board ” ) concluding that Sling had not shown claims 1

– 3of U.S. Patent No. 9,721,273 (“the ’273 patent”) to be unpatentable. We vacate and rema nd

. B ACKGROUND The ’273 patent relates to providing “audio/visual presentations via a computer network.” ’273 patent, col. 1, ll. 36– 37. T he ’273 patent describes the use of Really Simple Syndication (“RSS”), a standardized data format “ used to publish [ Internet ] content that may be frequently updated .” Id. at col. 10

, ll. 64

– 67. A n RSS feed has a single “channel

. ” J.A. 722. The channel contains information about the feed itself ( such as title, link, and description), as well as any number of “item” elements. J.A. 722, 725. E ach item element “may represent a ‘story’

— much like a story in a newspaper or magazine”

— and contain s metadata elements with information about the item, such as title, link, description, author, and category, with title or description being mandatory. J.A. 725 (“A ll elements of an item are optional, however at least one of title or description must be present.” ).

Claim 1 of the ’273 patent recites the following:
A method for providing content via a computer network and computing system, the method comprising:
storing presentation data that represents content of a first collection of one or more presenta tions using the computer system; Case: 21-1651 Document: 35 Page: 2 Filed: 02/02/2022SLING TV , L

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storing data indicative of the first collection of presentations so as to be associated with the presentation data;
storing feed data that represents a collection of one or more feeds using the computer system, wherein each of the feeds identifies a corresponding second collectionof one or more presentations being accessible via the computer network and includes no data representing content of the second collection of presentations;
automatically and periodically accessingeach of the feeds to identify each of the corresponding second collection of presentations, using the computer system;
storing data associated with a third collection of one or more presentations; and
aggregating each of the first, identified second, and t hird collections of presentationsfor delivery via the computer network using a common web page.

’273 p atent, col. 12

, ll

. 39

– 59. Claims 2 and 3 are dependent claims that were not separately addressed by the Board. We are concerned here with the limitati on “ storing feed data that represents a collection of one or more feedsusing the computer system, wherein each of the feeds identifies a corresponding second collection of one or more presentations being accessible via the computer network and includes no data representing content of the second collection of presentations ” ( hereinafter “ the feed limitation ”). Id. at col. 12, ll. 46

– 51. Sling petitioned the Board for inter partes review of claims 1

– 3 of the ’273 patent, asserting that the claims were obvio us over U.S. Patent Application Publication No. 2008/0256443 (“Li”) as well as Li in combination with U.S. Case: 21-1651 Document: 35 Page: 3 Filed: 02/02/2022SLING TV , L

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Patent Application Publication No. 2008/071929 (“Motte”). J.A. 56. In its petition, Sling argued that Li discloses the feed limitation via its use of RSS. J .A. 82

– 89.
In its Final Written Decision, t he Board stated that in its institution decision, it had “misread” the petition and “understood [Sling] to be relying on Li’s link to an RSSchannel as the claimed feed” rather than Sling’s actual positi on, which relie s on “Li’s link to an RSS channel as the claimed feed data and the RSS channel, itself, as the claimed feed. ” J.A. 8. The Board found that Sling’s actual position require s a claim construction of “no data representing content” in the feed limitation to encompass metadata, and stated that Sling’s “position on claim construction only became clear at the hearing.” J.A. 8

– 9. The Board determined that the “[p]atent [o]wner . . . did not have notice and fair opportunity to present arguments and evidence rebutting [Sling]’s theory [and f]or this reason, [found] that [Sling] ha [d] not demonstrated by a preponderance of the evidence that claims 1

– 3 of the ’273 patent are unpatentab le. ” J.A. 13. Nonetheless, the Board addressed the merits. The Board “credit[ed] [Sling’s] statement that the [p] etition relies on Li’s RSS channel” but declined to “adopt [Sling’s] belated clarification of its claim construction position asserting that metadata do not qualify as data representing content.” J.A. 24. T he Board determined that because Li’s RSS channel includes metadata, it does not disclose the feed limitatio n, which requires that the feed “includes no data representing content.” J.A. 2 4– 25. Because both grounds relied on Li, the Board concluded that Sling had not shown obviousness of the challenged claims. Sling appeals. We have jurisdiction under 28 U.S.C. § 1295(a)(4)(A).

D ISCUSSIONClaim construction is a question of law that may involve underlying factual inquiries. Teva Pharm s . USA, Inc. v. Sandoz, Inc. , 574 U.S. 318, 325

– 26 (2015). We Case: 21-1651 Document: 35 Page: 4 Filed: 02/02/2022SLING TV , L

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review claim constructions based solely on intrinsic evidence de novo and factual findings as t o extrinsic evidence for substantial evidence. Jazz Pharm s ., Inc. v. Amneal Pharm s ., LLC , 895 F.3d 1347, 1360 (Fed. Cir. 2018).

To the extent the Board’s decision rested on the theory that Sling “did not sufficiently clarify its claim construction position” in its petition, J.A. 13, that is not correct. Sling ’s petition contained an explicit mapping of the relevant elements in the feed limitation. The petition identifies, multiple times, links to RSS feeds disclosed by Li as the “feed data” and the RSS feeds themselves as the feed:
Li discloses feed data, such as addresses of RSS feeds. . . . Li describes that the user performs a “ registration act ” that sends portal server 10 an RSS feed’s URL address (i.e., feed data). . . . Thus, Li discloses storing feed data (addresses of RSS feeds) that represents a collection of one or more feeds (the user’s subscribed feeds) using the computer system (portal server 10).

J.A. 83

– 84. The petition also argued: The only specific example of a feed di sclosed by the ’273 Patent is a feed based on an RSS standard. Thus, a POSA would understand that the feature of ‘ no data representing content ’ is inherent to an RSS feed, such as that disclosed by Li.

J.A. 86 (citation omitted)

. On the merits, the Board’ s decision is difficult to understand. The Board expressed that “the outcome turns on whether metadata qualifies as ‘data representing content .’ ” J.A. 11 . In rejecting Sling’s arguments, the Board was “not persuaded that . . . metadata do not qualify as data representing content,” J.A. 17

– 18, and it “decline[d] to adopt [Sling’s] asserted construction that metadata do not qualify as ‘data representing content ,’ ” J.A. 20. To the extent that the Board suggested that Li’s use of RSS does not disclose Case: 21-1651 Document: 35 Page: 5 Filed: 02/02/2022SLING TV , L

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the f eed limitation because it includes metadata, that cannot be correct. The specification makes clear that RSS with metadata would be within the claim limitation. The specification discusses embodiments in detail “with regard to RSS 2.0 feeds ,” and it mentions that the invention “may besuitable for use with other types of content (e.g., audio/video) feeds.” ’273 patent, col. 11, ll. 14

– 19. The specification describes the use of standard RSS in conventional

ways

. I d. at col. 10, ll. 66

– 67 (“RSS u tilizes a standardized format.”)

, col. 11, ll. 27

– 28 (“[T]he logged on user requests to link an RSS feed, e.g., by interacting in a conventional manner with web page 200.”)

, col. 11, ll. 64

– 65 (Determining if new content exists “ may be accomplished in any of a number of conventional manner [s] ”)

. T he conventional RSS standard requires including metadata, specifically either title or description

, for each item in the feed. J.A. 725. At oral argument, Uniloc’s counsel could not identify anywhere in the ’273 patent specification disclos ing an RSS feed without metadata

. Oral Arg. 16:30

– 17:50.Under the Board’s interpretation of “no data representing content,” the preferred RSS embodiment would fall outside the scope of claim 1 because standard RSS feeds contain metadata. “ A claim construction that ‘ excludes the preferred embodiment is rarely, if ever, correct and would require highly persuasive evidentiary support. ’ ” SynQor, Inc. v. Artesyn Techs., Inc. , 709 F.3d 1365, 1378

– 79 (Fed. Cir. 2013) (qu oting Adams Respiratory Therapeutics, Inc. v. Perrigo Co. , 616 F.3d 1283, 1290 (Fed. Cir. 2010)). Because the Board’s claim construction excludes a preferredembodiment and is inconsistent with the specification’s description of the invention, it is incor rect. 1

1 The Board suggested an apparent tension betweenthe construction of “presentation data that represents content” earlier in claim 1 and “no data representing content” in the feed limitation. J.A. 20

– 22. We think that the Case: 21-1651 Document: 35 Page: 6 Filed: 02/02/2022SLING TV , L

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We think that the correct claim construction of the feed limitation encompasses RSS feeds containing metadata, but w ould exclude, for example, RSS feeds containing “the entirety of a text story,” which the Board noted would be within the RSS standard but outside the scope of the limitation , J.A. 17

. On remand, the Board should determine whether the challenged claims in the ’273 patent would have been obvious over Li or the combination of Li and Motte in light of the correct construction of the feed limitation.

C ONCLUSION

We vacate and remand for further proceedings consistent with this opinion.

VACATED AND REMANDED

COST S
Costs to Sling TV, L .L.C.

language of the two limitations does not require the same construction, and we further note that Sling’s petition relie d on Li’s disclosure of a “content library,” not Li’s use of RSS feeds, to satisfy the “presentation data” limitation.J.A. 78 (“Li describes storing the presentation data (thumbnails and t itles) in a ‘content library’ of database 11 and/or a ‘cache memory’ of portal server 10.”). Case: 21-1651 Document: 35 Page: 7 Filed: 02/02/2022