Uniloc 2017 LLC v. Facebook Inc.

• Decision Date: 09 March 2021
• Docket Number: 2019-1688,2019-1689
• Parties: UNILOC 2017 LLC, Appellant v. FACEBOOK INC., WhatsApp, Inc., Appellees Uniloc 2017 LLC, Appellant v. Facebook Inc., WhatsApp, Inc., Appellees
• Court: U.S. Court of Appeals — Federal Circuit

989 F.3d 1018

UNILOC 2017 LLC, Appellant

v.FACEBOOK INC., WhatsApp, Inc., Appellees

Uniloc 2017 LLC, Appellant

v.Facebook Inc., WhatsApp, Inc., Appellees

2019-1688

2019-1689

United States Court of Appeals, Federal Circuit.

Decided: March 9, 2021

Jeffrey A. Stephens, Etheridge Law Group, Southlake, TX, argued for appellant. Also represented by James Etheridge, Ryan S. Loveless, Brett Mangrum.

Phillip Edward Morton, Cooley LLP, Washington, DC, argued for appellees. Also represented by Heidi Lyn Keefe, Andrew Carter Mace, Lowell D. Mead, Mark R. Weinstein, Palo Alto, CA.

Before Lourie, Wallach, and Chen, Circuit Judges.

Chen, Circuit Judge.

Uniloc 2017 LLC (Uniloc) appeals from two consolidated inter partes review (IPR) decisions of the Patent Trial and Appeal Board (Board) finding unpatentable claims 1–8 and claims 9–12, 14–17, 25 and 26 of U.S. Patent No. 8,995,433 (’433 patent) as obvious.

Foremost at issue in this case is whether 35 U.S.C. § 314(d) ’s "No Appeal" provision bars this court's review of the Board's conclusion that under § 315(e)(1) a petitioner is not estopped from maintaining the IPR proceeding before it. Under the circumstances of this case, we hold that § 314(d) does not preclude this court from reviewing the Board's § 315(e)(1) estoppel decision. We further conclude that the Board did not err in finding that LG Electronics Inc. (LG) is not estopped from maintaining its IPR challenge to claims 1–8 and that Facebook and WhatsApp (collectively, Facebook) are not estopped from challenging claim 7. As to the Board's obviousness conclusions, we see no error in the Board's unpatentability findings. Accordingly, we affirm.

BACKGROUND

A

Uniloc is the owner of the ’433 patent, which is directed to "a system and method for enabling local and global instant [Voice over Internet Protocol (VoIP)] messaging over an IP network." ’433 patent col. 1 ll. 21–23. The patent describes the implementation of two modes: "record mode" and "intercom mode." Id. at col. 7 ll. 61–65. In record mode, the user's speech is recorded into an audio file, and upon finalization, the user sends a signal to the server that the message is ready to be sent. Id. at col. 8 ll. 9–22. The message is then sent to the server and the server delivers the message to the selected recipient. Id. at col. 8 ll. 25–43. However, if the recipient is not currently available, i.e., disconnected, the server temporarily saves the instant voice message and delivers it to the recipient when the recipient connects to its local server, i.e., becomes available. Id. The intercom mode operates similarly, but it allows for the instant voice message to be transmitted in real-time to the selected recipient by storing the message on buffers until the buffers fill and the message is then sent to the server to be transmitted to the recipient. Id. at col. 11 ll. 37–60. The instant voice message can also contain various attachments. Id. at col. 13 ll. 5–6.

Claims 1 and 9 are the independent claims at issue here.¹ They state, in pertinent part, as follows:

1. A system comprising:

an instant voice messaging application including a client platform system for generating an instant voice message and a messaging system for transmitting the instant voice message over a packet-switched network via network interface;

...

wherein the instant voice messaging application includes a message database storing the instant voice message , wherein the instant voice message is represented by a database record including a unique identifier; and

wherein the instant voice messaging application includes a file manager system performing at least one of storing, deleting and retrieving the instant voice messages from the message database in response to a user request.

9. A system, comprising:

an instant voice messaging application comprising:

a client platform system ... ;

a messaging system ... , and

wherein the instant voice message application attaches one or more files to the instant voice message .

’433 patent at claims 1, 9 (emphases added).

B

Facebook filed two petitions for inter partes review of the ’433 patent on May 11, 2017. In the first petition (’1427 IPR Pet.), Facebook challenged claims 1–8 as obvious under 35 U.S.C. § 103 with Zydney² and Clark³ as references for claims 1–6 and 8 and Zydney, Clark, and Appelman⁴ as references for claim 7. In the second petition (’1428 IPR Pet.), Facebook alleged that claims 9, 12, 14, 17, 25, and 26 would have been obvious under § 103 in view of Zydney, claims 11, 15, and 16 would have been obvious in view of Zydney and Greenlaw⁵ , and claim 10 would have been obvious in view of Zydney and Newton⁶ .

Meanwhile, a different IPR proceeding challenging claims of the ’433 patent, IPR2017-00225, was already pending at the Board, petitioned for by Apple Inc. (Apple). On June 16, 2017, after it had filed the ’1427 IPR Pet. and ’1428 IPR Pet., Facebook filed a new petition, identical in substance to Apple's IPR petition, challenging claims 1–6 and 8 of the ’433 patent and a motion to join the Apple IPR. In response, the Board instituted this IPR and granted Facebook's motion to join Apple's IPR on October 3, 2017.

Aside from Apple and Facebook, yet another party was interested in invalidating certain claims of the ’433 patent —LG. Before a decision issued on whether to institute Facebook's IPR petitions, on September 11, 2017, LG filed IPR petitions identical in substance to Facebook's ’1427 and ’1428 IPR petitions and motions to join both of Facebook's IPRs.

The Board then, on December 4, 2017, instituted inter partes review for Facebook's ’1427 and ’1428 IPR petitions.⁷ Given that Facebook was now a party to multiple different IPR proceedings challenging claims of the ’433 patent, the Board foresaw the possibility of a statutory estoppel issue arising under 35 U.S.C. § 315(e)(1). At the end of its institution decision in the ’1427 IPR, the Board ordered the parties to "brief the applicability, if any, of 35 U.S.C. § 315(e)(1)" against Facebook, in light of the anticipated, soon-to-be-issued final written decision for the Apple IPR, to which Facebook was a joined party. Facebook, Inc. v. Uniloc USA, Inc. , No. IPR2017-01427, 2017 WL 6034153, at *10 (P.T.A.B. Dec. 4, 2017) ( Institution Decision ). The Board did not issue a similar request for briefing in its institution decision for the ’1428 IPR. Notably, at the time of this supplemental briefing, LG's petition and motion to join remained pending.

In its § 315 supplemental brief, Facebook argued that it should not be estopped from challenging the patentability of any claim upon the issuance of a final written decision in the Apple IPR, but even if the Board found it estopped, Facebook should at least continue as a petitioner here against claim 7, which was never challenged in the Apple IPR. See J.A. 606–07. Further, Facebook contended that, if LG's IPR petition was granted and LG was joined as a party to the ’1427 IPR, then the ’1427 IPR should proceed as to all challenged claims regardless of whether Facebook was found estopped because LG was not a party in the Apple IPR. Id. at 610. In response, Uniloc contended that, once the Board issued a final written decision in the Apple IPR, Facebook would be estopped as to all claims challenged in the ’1427 IPR, requiring the Board to then terminate that proceeding. J.A. 617. In addition, Uniloc averred that "[a]llowing LG Electronics to join this IPR will create inefficiency and confusion. This IPR should be terminated and LG Electronics can, if it chooses to, file its own IPR." Id.

The Board subsequently instituted IPRs based on LG's petitions and then granted LG's motion to join the ’1427 IPR and ’1428 IPR on March 6, 2018. J.A. 655. Uniloc then filed its Patent Owner Responses to the original Facebook IPR petitions on March 23, 2018. In its ’1427 IPR response, inter alia , Uniloc contended that LG should be barred from maintaining the ’1427 IPR once the Board issues a final written decision in the Apple IPR because LG is estopped as a real party in interest (RPI) or privy to Facebook. See, e.g. , J.A. 685.

Two months later, on May 23, 2018, the Board issued a final written decision in the Apple IPR upholding the patentability of all challenged claims. Six days later, on May 29, 2018, the Board issued a decision in the ’1427 IPR dismissing-in-part Facebook from the IPR, finding that Facebook was "estopped from maintaining the instant proceeding under § 315(e)(1)" as to the claims challenged in the Apple IPR, i.e., claims 1–6 and 8 of the ’433 patent. J.A. 756. As to claim 7, the Board reasoned that Facebook was not estopped from maintaining the proceeding for that claim because § 315(e)(1) ’s estoppel provisions apply only to grounds that the petitioner raised or reasonably could have raised "with respect to that claim ." Id. at 756–57. Lastly, the Board concluded that "[t]he dismissal of Facebook ... does not limit LG's participation in any way," id. at 758, and therefore, LG was "to assume the role of challenger as to all claims, with Facebook[’s] ... participation limited as to issues concerning solely claim 7," id. at 759 (emphasis omitted).

C

The Board issued its final written decision in the consolidated IPRs on November 20, 2018. The Board concluded that all of the challenged claims are unpatentable. Facebook, Inc. v. Uniloc 2017 LLC , Nos. IPR2017-01427, IPR2017-01428, 2018 WL 6271687, at *33 (P.T.A.B. Nov. 30, 2018). The Board found that claims 1–6 and 8 of the ’433 patent would have been obvious over Zydney in view of Clark, with Zydney teaching all but the "message database" and Clark supplying this missing limitation. Id. at *14, *22, *24. Likewise, the Board concluded that claim 7 is unpatentable as obvious under a similar combination of Zydney, Clark, and Appelman. Id. at *24. The Board also concluded that claims 9–12, 14–17, 25, and 26 are unpatentable as obvious, with Zydney again as the primary reference. Id. at *27, *29, *31–33. Relevant to this appeal, the...