Case: 19-1151 Document: 80 Page: 1 Filed: 02/09/2021
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
APPLE INC., FACEBOOK, INC., WHATSAPP, INC.,
Appellants
v.
UNILOC 2017 LLC,
Cross-Appellant
______________________
2019-1151, 2019-1179, 2019-1203
______________________
Appeals from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in Nos. IPR2017-
00222, IPR2017-01635.
______________________
Decided: February 9, 2021
______________________
LAUREN B. FLETCHER, Wilmer Cutler Pickering Hale
and Dorr LLP, Boston, MA, for appellant Apple Inc. Also
represented by HEATH BROOKS, Washington, DC; S. CALVIN
WALDEN, New York, NY.
HEIDI LYN KEEFE, Cooley LLP, Palo Alto, CA, for appel-
lants Facebook, Inc., WhatsApp, Inc. Also represented by
LOWELL D. MEAD, MARK R. WEINSTEIN; PHILLIP EDWARD
MORTON, Washington, DC.
Case: 19-1151 Document: 80 Page: 2 Filed: 02/09/2021
2 APPLE INC. v. UNILOC 2017 LLC
JAMES ETHERIDGE, Etheridge Law Group, Southlake,
TX, for cross-appellant. Also represented by RYAN S.
LOVELESS, BRETT MANGRUM, JEFFREY A. STEPHENS.
______________________
Before LOURIE, WALLACH, and CHEN, Circuit Judges.
LOURIE, Circuit Judge.
Apple Inc. (“Apple”) petitioned for inter partes review
of U.S. Patent 8,243,723 (“the ’723 patent”), owned by
Uniloc Luxembourg S.A. (“Uniloc”). The United States Pa-
tent and Trademark Office Patent Trial and Appeal Board
(“the Board”) held that claims 1 and 2 of the ’723 patent
would have been obvious over the prior art but that Apple
failed to demonstrate by a preponderance of the evidence
that claims 3–8 would have been obvious. See Apple Inc. v.
Uniloc Luxembourg S.A., No. IPR2017-00222,
2018 WL
2355988 (P.T.A.B. May 23, 2018) (“Decision”). Apple ap-
peals the Board’s holding that it failed to demonstrate un-
patentability of claims 3–8, and Uniloc cross-appeals the
Board’s holding that claims 1 and 2 would have been obvi-
ous. We affirm the Board’s decision in all respects.
BACKGROUND
Uniloc owns the ’723 patent, which is directed to sys-
tems and methods for delivering instant voice-over-IP
(“VoIP”) messages over the Internet. Traditional telephony
is based on a public switched telephone network (“PSTN”).
’723 patent col. 1 ll. 20–21. The patent acknowledges that
voice messaging in both PSTN and VoIP as well as instant
text messaging over an IP network were known.
Id. col. 2
ll. 18–30. But the patent asserts that at the time of the
invention there remained a need for instant VoIP messag-
ing with PSTN support.
Id. col. 2 ll. 43–49.
The ’723 patent purports to address this need by
providing a local instant voice messaging (“IVM”) system
that includes an IVM server and one or more IVM clients,
Case: 19-1151 Document: 80 Page: 3 Filed: 02/09/2021
APPLE INC. v. UNILOC 2017 LLC 3
such as VoIP telephones.
Id. col. 6 ll. 48–55. The IVM
server stores users that are known to the server, including
IVM clients and legacy telephone clients.
Id. col. 13 ll. 56–
58. The server stores a record for each user, including a
contact list that indicates other users with which the user
wishes to exchange instant voice messages.
Id. col. 13
ll. 58–62. The server also maintains a record of the connec-
tivity status of each IVM client (i.e., whether the client is
connected to the IVM server and available to receive mes-
sages),
id. col. 12 ll. 46–52, and facilitates the transmission
of messages between clients,
id. col. 7 ll. 59–61.
To initiate transmission of a voice message, an IVM cli-
ent displays a user’s contact list, and the user selects one
or more IVM recipients to whom to transmit a voice mes-
sage.
Id. col. 7 ll. 61–67. “The user selection also generates
a start signal to the IVM client that the user is ready to
begin instant voice messaging.”
Id. col. 8 ll. 1–3. The pa-
tent discloses two modes of operation—a “record mode” and
an “intercom mode.”
Id. col. 7 ll. 53–57. In record mode, in
response to the start signal, the IVM client records the
user’s speech into a digitized audio file stored on the IVM
client.
Id. col. 8 ll. 3–7. If a recipient IVM client is con-
nected to the IVM server, the audio file is immediately
transmitted to the recipient client.
Id. col. 8 ll. 28–30. If a
recipient client is not connected to the server (i.e., if the
recipient client is “unavailable”), the audio file is temporar-
ily stored on the server and transmitted to the recipient
client when the client connects to the server.
Id. col. 8
ll. 30–35.
Unlike record mode, according to the patent, intercom
mode implements real-time instant voice messaging. In in-
tercom mode, instead of recording the user’s speech to an
audio file, the IVM client uses one or more buffers to write
and transmit successive portions of the user’s speech to the
IVM server.
Id. col. 11 ll. 33–43.
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4 APPLE INC. v. UNILOC 2017 LLC
Apple petitioned for inter partes review of claims 1–8 of
the ’723 patent. Claim 1 is the only independent claim at
issue, with claims 2–8 depending directly or indirectly from
claim 1. Claims 1, 3, and 8 are specifically relevant to this
appeal and are reproduced below.
1. A method for instant voice messaging over a
packet-switched network, the method comprising:
monitoring a connectivity status of nodes within
the packet-switched network, said connectivity sta-
tus being available and unavailable;
recording the connectivity status for each of the
nodes;
associating a sub-set of the nodes with a client;
transmitting a signal to a client including a list of
the recorded connectivity status for each of the
nodes in the sub-set corresponding to the client;
receiving an instant voice message having one or
more recipients;
delivering the instant voice message to the one or
more recipients over a packet-switched network;
temporarily storing the instant voice message if a
recipient is unavailable; and
delivering the stored instant voice message to the
recipient once the recipient becomes available.
Id. col. 23 l. 56–col. 24 l. 16.
3. The method for instant voice messaging over a
packet-switch network according to claim 1, fur-
ther comprising the step of:
controlling a method of generating the instant
voice message based upon the connectivity status
of said one or more recipient.
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APPLE INC. v. UNILOC 2017 LLC 5
Id. col. 24 ll. 17–26.
8. The method for instant voice messaging over a
packet-switch network according to claim 6,
wherein said intercom mode comprises the steps of:
buffering each of a plurality of successive portions
of the instant voice as the instant voice message is
recorded;
transmitting from each successive buffered por-
tion; and
delivering each successive portion to the recipients
wherein the recipients audibly playing each succes-
sive portion as it is delivered.
Id. col. 24 ll. 46–54.
Relevant to this appeal, Apple alleged that (1) claim 1
would have been obvious over U.S. Patent App. Pub.
2002/0146097 (“Vuori”), (2) claims 2–7 would have been ob-
vious over Vuori in view of U.S. Patent App. Pub.
2003/0219104 (“Malik”), and (3) claim 8 would have been
obvious over Vuori in view of Malik and U.S. Patent
6,192,395 (“Lerner”).
Vuori discloses systems and methods for sending short
voice messages (“SVMs”) between mobile devices. To
transmit an SVM, a user device records a message spoken
by the user. Vuori ¶ 32. The user selects one or more re-
cipients of the SVM, and the user device transmits the rec-
orded message to an SVM service center (“SVMSC”), which
determines the availability of the recipients.
Id. ¶ 33–34.
Vuori discloses an SVM presence service that accepts,
stores, and distributes presence information among clients.
Id. ¶ 43. Presence information can include a status indi-
cating that a user is online (available), offline (unavaila-
ble), or other information. Id. ¶ 47. The SVMSC is able to
check the availability of the recipient. Id. ¶ 50. If the re-
cipient is available, the SVMSC sends the message
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6 APPLE INC. v. UNILOC 2017 LLC
immediately; if the recipient is unavailable, it continues at-
tempting to send the message until the recipient either be-
comes available or a time out occurs. Id. ¶ 50–51. In one
embodiment, the recipient receives a notification of the re-
ceived message, which the recipient can accept or reject.
Id. ¶ 36. In another embodiment, the sender first deter-
mines whether the intended recipient is available by
means of a presence service and whether the intended re-
cipient has effectively acquiesced to availability by previ-
ously joining a “buddy list.” If so, the recipient immediately
receives the SVM. Id.
Malik discloses systems and methods for sending in-
stant voice messages where clients receive and play voice
messages received from other clients. Malik ¶ 25. Malik
describes a voice instant message (“VIM”) server that mon-
itors presence information of clients. Id. ¶ 26. To initiate
transmission of a voice message, a user speaks into a mi-
crophone of a client device, which generates a voice record-
ing. Id. ¶ 33. The client then sends the voice recording to
a server. Id. ¶ 36. If a recipient client is unavailable to
receive the message, the message is stored in a queue and
delivered when the recipient client connects to the net-
work. Id.
Lerner discloses a method of visually identifying
speaking participants in a multi-participant event, such as
an audio conference. Lerner describes a sound control
module that routes sound between participants using a
plurality of buffers. Lerner col. 5 ll. 27–30. To transmit
sound, a router breaks a signal in a transmit buffer into
packets that are routed to the participants by a server. Id.
col. 5 ll. 44–54. To receive sound from remote participants,
the sound control module includes a plurality of receive
sound buffers. Id. col. 5 ll. 30–34. The identity of the par-
ticipant associated with each packet is used to route the
packet to the appropriate receive sound buffer. Id. col. 5
ll. 37–40.
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APPLE INC. v. UNILOC 2017 LLC 7
The Board instituted trial on all grounds and issued a
final written decision concluding that Apple had demon-
strated that claims 1 and 2 would have been obvious but
failed to demonstrate by a preponderance of evidence that
claims 3–8 would have been obvious. The Board first con-
strued “list” as recited in claim 1. The Board agreed with
Uniloc that the “list” must record the connectivity status of
more than one node, reasoning that to conclude otherwise
would ignore the recitation of recording a connectivity sta-
tus for each of the nodes. Decision,
2018 WL 2355988,
at *6. Applying its construction, the Board determined
that Vuori’s use of a buddy list and tracking of presence
information of users discloses the claimed “transmitting a
signal to a client including a list of the recorded connectiv-
ity status for each of the nodes in the sub-set corresponding
to the client.” Id. at *12.
With respect to claim 3—as well as claims 4–8, which
depend directly or indirectly from claim 3—the Board re-
jected Apple’s argument that both Vuori and Malik disclose
“controlling a method of generating the instant voice mes-
sage based upon the connectivity status of said one or more
recipient.” Id. at *16. Specifically, the Board found that
both Vuori and Malik describe different methods for send-
ing messages based on connectivity status but fail to dis-
close different modes of generating messages, as required
by claim 3. Id.
Finally, with respect to claim 8, the Board noted that
Apple had failed to demonstrate unpatentability based on
claim 8’s dependency from claim 3. Id. at *17. Nonethe-
less, the Board concluded that Apple had not demonstrated
that Lerner discloses “buffering each of a plurality of suc-
cessive portions of the instant voice as the instant voice
message is recorded.” Id. Specifically, the Board found
that Lerner’s receive sound buffers buffer packets as they
are received by the recipient, not as the messages are rec-
orded, id. at *18, and noted that Apple’s petition did not
rely on any other buffer in Lerner as disclosing the
Case: 19-1151 Document: 80 Page: 8 Filed: 02/09/2021
8 APPLE INC. v. UNILOC 2017 LLC
buffering limitation, id. The Board denied requests for re-
hearing from both parties. See Apple Inc. v. Uniloc Luxem-
bourg S.A., No. IPR2017-00222,
2018 WL 4263073
(P.T.A.B. Sep. 6, 2018); Apple Inc. v. Uniloc Luxembourg
S.A., No. IPR2017-00222,
2018 WL 4279645 (P.T.A.B. Sep.
6, 2018).
Apple appealed, and Uniloc cross-appealed. We have
jurisdiction under
28 U.S.C. § 1295(a)(4)(A).
DISCUSSION
Obviousness is a question of law that “lends itself to
several basic factual inquiries,” Graham v. John Deere Co.,
383 U.S. 1, 17–18 (1966) (citing Great Atl. & Pac. Tea Co.
v. Supermarket Equip. Corp.,
340 U.S. 147, 155 (1950)), in-
cluding the scope and content of the prior art, the level of
ordinary skill in the art, differences between the prior art
and the claimed invention, and any relevant secondary con-
siderations.
Id. “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) (citing Rambus Inc. v. Rea,
731
F.3d 1248, 1251 (Fed. Cir. 2013)). A finding is supported
by substantial evidence if a reasonable mind might accept
the evidence as adequate to support the finding. Consol.
Edison Co. v. NLRB,
305 U.S. 197, 229 (1938). “If two ‘in-
consistent conclusions may reasonably be drawn from the
evidence in record, the PTAB’s decision to favor one conclu-
sion 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) (quoting In re Cree, Inc.,
818 F.3d 694,
701 (Fed. Cir. 2016) (internal brackets omitted)).
I. APPLE’S APPEAL
On appeal, Apple argues that the Board erred in im-
plicitly construing claim 3 as requiring two modes of gen-
erating a voice message. Under a correct interpretation in
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APPLE INC. v. UNILOC 2017 LLC 9
which claim 3 requires only one method of generating a
voice message based on connectivity status, according to
Apple, Malik discloses the additional limitation of claim 3.
However, even under the Board’s construction, Apple ar-
gues that the Board’s conclusion that Malik fails to disclose
the controlling limitation was unsupported by substantial
evidence.
Apple also argues that the Board’s conclusion that Ler-
ner fails to disclose the buffering limitation of claim 8 was
unsupported by substantial evidence. We address Apple’s
arguments in turn.
1. Claim 3
Claim 3 depends from claim 1 and further recites “con-
trolling a method of generating the instant voice message
based upon the connectivity status of said one or more re-
cipient” (the “controlling limitation”). Apple argues that,
although neither party sought construction of any element
of claim 3 and the Board provided none, the Board in its
obviousness analysis implicitly construed claim 3 “as re-
quiring two modes of generating instant voice messages.”
Appellants’ Br. 35. According to Apple, claim 3 does not
require selecting a method of generating an instant voice
message from more than one method, but requires only
controlling “one method of generating the instant voice
message based on connectivity status.” Id. at 37.
Apple offers two explanations why Malik satisfies its
proposed interpretation: first, because it discloses detect-
ing whether the recipient is available before generating a
voice recording, id. at 39–40 (citing Malik Fig. 4); second,
because, in some embodiments, a user is given a choice
whether to generate a voice message if the recipient is un-
available, while in other embodiments a voice message is
generated regardless of the availability of the recipient. Id.
at 41 (citing Malik ¶ 31). Even under the Board’s alleged
construction, Apple argues, Malik discloses the controlling
limitation because it describes delivering messages
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10 APPLE INC. v. UNILOC 2017 LLC
immediately if the recipient is available, while storing and
delivering messages later if the recipient is unavailable.
Id. at 42.
As an initial matter, we disagree with Apple that the
Board engaged in implicit construction of claim 3 in its ob-
viousness analysis. Rather, the Board made factual find-
ings regarding the content of Malik’s disclosure, and
considered whether that content satisfied the claims. Ap-
ple points to a single statement as evidence of the Board’s
alleged implicit construction in which the Board found that
Malik does not “control[] the ‘generating’ of the voice in-
stant message because it is always generated in the same
manner—recording mode.” Decision,
2018 WL 2355988, at
*16. Rather than engaging in implicit claim construction,
the Board merely made a factual finding that, when Malik
describes generating a voice instant message, the message
is always generated by recording and storing the voice of
the sender, akin to the recording mode of the ’723 patent.
Whether asserted prior art discloses the claim limita-
tions of a challenged patent is a factual question reviewed
for substantial evidence, see Elmer v. ICC Fabricating, Inc.,
67 F.3d 1571, 1575 (Fed. Cir. 1995), and we reject Apple’s
attempt to bootstrap its argument into one of claim con-
struction in order to receive de novo review. See also Gra-
ham,
383 U.S. at 17–18 (establishing the “basic factual
inquiries” underlying obviousness, including “the scope
and content of the prior art” and the “differences between
the prior art and the claims at issue”). Accordingly, we con-
sider only whether the Board’s determination that Malik
fails to disclose the controlling limitation was supported by
substantial evidence.
Apple offers three theories of how Malik discloses “con-
trolling a method of generating the instant voice message
based upon the connectivity status” of a recipient. First, in
its petition, Apple argued that Malik discloses the control-
ling limitation because “when a client is online and
Case: 19-1151 Document: 80 Page: 11 Filed: 02/09/2021
APPLE INC. v. UNILOC 2017 LLC 11
available, a client generates and sends messages in real
time,” while “when the recipient is not present and/or is not
available online VIMs are recorded.” J.A. 5032. The Board
concluded that the cited portions of Malik describe “send-
ing [messages], not generating them.” Decision,
2018 WL
2355988, at *16.
We agree with the Board. Whether the message is de-
livered immediately or at a later time, the message is gen-
erated in the same manner—by a voice recording. See
Malik ¶¶ 32–33 (“[I]n blocks 430-435, the VIM client 320 of
the second user checks to see if the computing device of the
VIM client 320 is capable of generating a voice recording.”);
(“[I]f the second user accepts the VIM invitation, then the
VIM client 320 of the second user starts a voice recorder.”);
(“[T]he VIM client 320 of the second user generates a voice
recording for the first user.”). Because the voice message
is generated in the same manner regardless whether its
delivery is immediate or delayed, the method of generation
cannot be said to be “controlled” based on connectivity sta-
tus.
Apple suggests that, because Malik does not expressly
state that a voice recording is generated in the same man-
ner when the message is delivered immediately as when
the message is stored and delivered later, Malik must dis-
close some other manner of generating voice message when
it is delivered in real time. Appellants’ Br. 44. To the ex-
tent that Apple argues that Malik’s “real time” delivery in-
herently discloses that the voice message is generated in a
different manner, we disagree. Apple, holding the burden
of persuasion, presented no evidence that real time mes-
sage delivery requires the voice message to be generated in
a manner other than voice recording—the only method dis-
closed in Malik—and Malik provides no suggestion that
generating the message by voice recording would be inade-
quate or incompatible with real time message delivery.
“The mere fact that a certain thing may result from a given
set of circumstances is not sufficient [to establish
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12 APPLE INC. v. UNILOC 2017 LLC
inherency.]” In re Rijckaert,
9 F.3d 1531, 1534 (Fed. Cir.
1993) (quoting In re Oelrich,
666 F.2d 578, 581–82 (CCPA
1981)). Accordingly, based on the disclosure of Malik, we
conclude that the Board’s finding that the messages are
generated by voice recording in both cases was supported
by substantial evidence.
Second, Apple argues that Figure 4 of Malik (repro-
duced below) discloses the controlling limitation because it
discloses detecting whether the recipient is available before
generating a voice recording. Appellant Br. 39–40.
We note that Apple did not advance this theory in its peti-
tion, and it cannot be raised for the first time on appeal.
See Wasica Finance GmbH v. Continental Automotive Sys.,
Inc.,
853 F.3d 1272, 1286–87 (Fed. Cir. 2017). 1 In any
1 Apple did not explicitly reference Figure 4 of Malik
in its original petition, nor did it make nearly as compre-
hensive an argument regarding the disclosure of Figure 4
before the Board until it sought rehearing. See J.A. 5020–
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APPLE INC. v. UNILOC 2017 LLC 13
event, we disagree with Apple. The fact that the determi-
nation of availability occurs before the generation of the
voice message does not demonstrate that the method of
generation is controlled by the connectivity status. In fact,
because Figure 4 does not show any logical decision regard-
ing generation at step 425—where availability is deter-
mined—the determination of availability cannot be said to
exert control over any aspect of generating the voice mes-
sage. Further, Malik explains, in the portion cited by Ap-
ple in its petition, that the only action in response to the
determination in step 425 that the user is not present
and/or available is that the “sending of the instant mes-
sage” is not initiated. See Malik ¶ 32 (emphasis added).
Accordingly, we disagree that Figure 4 demonstrates that
the determination of connectivity status controls the
method of generating the voice message, and we reject Ap-
ple’s argument.
Third, Apple points to the disclosure in ¶ 31 of Malik
that, in other embodiments, a voice message is generated
“regardless of the presence and/or availability” of the recip-
ient. Appellants’ Br. 41 (quoting Malik ¶ 31). According to
Apple, this demonstrates that, in the Figure 4 embodiment,
“the voice instant message is generated based upon connec-
tivity status.” Id. at 42. As above, Apple did not present
this theory in its petition, and we consider this argument
forfeited. But as above, we also disagree with Apple’s read-
ing-through-negative-implication argument. Consistent
with the Board’s finding, when read in the full context of
Malik’s discussion of Figure 4, Malik describes only that
the sending of the message is controlled by the connectivity
23. In its petition, Apple did point to a portion of the spec-
ification in Malik describing in part the embodiment in Fig-
ure 4; however, the discussion was limited to two sentences
of Malik, which reference only blocks 425, 430, and 435.
J.A. 5032.
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14 APPLE INC. v. UNILOC 2017 LLC
status of the receiver, not the generating of that message.
Accordingly, we reject this argument as well and affirm the
Board’s decision that Apple failed to demonstrate that
claim 3 would have been obvious over the prior art.
2. Claim 8
Because we affirm the Board’s conclusion that Apple
failed to demonstrate that Malik discloses the controlling
limitation of claim 3 and Apple does not dispute the Board’s
conclusion that Vuori fails to disclose the limitation, we af-
firm the Board’s conclusion that Apple did not demonstrate
that claim 8 would have been obvious based on claim 8’s
dependency from claim 3. Accordingly, we need not ad-
dress Apple’s argument that the Board erred in determin-
ing that Lerner does not disclose the buffering limitation of
claim 8.
II. UNILOC’S CROSS-APPEAL
In its cross-appeal, Uniloc argues that the Board erred
in concluding that claims 1 and 2 would have been obvious
over the prior art. Specifically, Uniloc argues that the
Board’s determination that Vuori discloses “transmitting a
signal to a client including a list of the recorded connectiv-
ity status for each of the nodes in the sub-set corresponding
to the client” as recited in claim 1 was unsupported by sub-
stantial evidence.
Uniloc makes two principal arguments. First, Uniloc
argues that Vuori fails to disclose transmitting a single sig-
nal that includes a list of connectivity statuses for multiple
users. Instead, according to Uniloc, the SVM presence ser-
vice of Vuori distributes presence information one value at
a time, rather than including multiple values in a single
signal. Referring to Figure 7 (reproduced below), Uniloc
asserts that Vuori describes that SVM watcher 256 re-
quests either “the current value of some SVM presentity’s
presence information” or “notification from the SVM pres-
ence service 248 of (future) changes in some SVM
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APPLE INC. v. UNILOC 2017 LLC 15
presentity’s presence information.” Cross-Appellant’s
Br. 22 (quoting Vuori ¶ 44). In either case, according to
Uniloc, status information is distributed for only a single
client device, rather than a list of statuses for multiple us-
ers.
Apple responds that the Board’s conclusion that the
SVM presence service distributes presence information for
multiple nodes in a single signal was supported by substan-
tial evidence, and we agree. The Board considered the tes-
timony of Uniloc’s expert, William Easttom, that the SVM
presence service “distributes presence information . . . one
value at a time,” but found that Uniloc’s evidence was con-
tradicted by other aspects of Vuori’s disclosure. Decision,
2018 WL 2355988, at *14. Specifically, referring to Figure
10, the Board found that Vuori illustrates presence infor-
mation comprising multiple “presence tuples,” each with a
status marker.
Id. Vuori explains that “presence infor-
mation comprises an arbitrary number of elements,” and
“[e]ach such element comprises a status marker.” Vuori
¶ 47. Based on this disclosure, the Board determined that
it was not reasonable to restrict Vuori’s teaching to distrib-
uting only one status value at a time, as suggested by
Easttom. It was within the Board’s discretion to assess the
credibility of Easttom’s testimony, see Yorkey v. Diab,
601
F.3d 1279, 1284 (Fed. Cir. 2010) (citing Velander v. Garner,
348 F.3d 1359, 1371 (Fed. Cir. 2003)), and, based on Vuori’s
disclosure of the presence information as comprising mul-
tiple status markers, we cannot conclude that it was error
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16 APPLE INC. v. UNILOC 2017 LLC
for the Board to determine that Vuori’s transmission of
presence information includes status information for mul-
tiple users.
Second, Uniloc argues that the Board erred in deter-
mining that Vuori discloses transmitting a signal to a cli-
ent. Again referring to Figure 7, Uniloc argues that
presence information is distributed only to SVM watcher
256, not to either of the “user agents” (i.e., clients, denoted
as 276 and 278). Apple responds that the Board’s conclu-
sion that a person of ordinary skill would understand that
the presence information is transmitted to the user agents
was supported by substantial evidence, relying on the tes-
timony of its expert, Dr. Leonard Forys.
Before the Board, Uniloc presented the same argu-
ment, relying on Easttom’s declaration that “SVM watcher
256 is not a user-facing ‘client’” and, relying on the unidi-
rectional arrows in Figure 7, that “presence information is
not distributed to a ‘user agent.’” J.A. 3014 ¶ 29. Apple
responded with Forys’s supplemental declaration that the
SVM watcher is client-facing because (1) Vuori suggests
that it is coupled to the user agent, and (2) the presence
status must be distributed to a user agent because the sta-
tus markers are interpretable by “programs or persons.”
J.A.2335–37 ¶¶ 18–19, 21. After weighing the experts’
competing theories, the Board “credit[ed] Dr. Forys’s testi-
mony as being more consistent with and supported by
Vuori’s teachings.” Decision,
2018 WL 2355988, at *15.
Specifically, the Board found that Forys’s testimony is con-
sistent with Vuori’s disclosure that “a user agent is purely
coupling between a principal and some core entity of the
system,” such as SVM watcher 256, and we agree.
Ultimately, Uniloc’s arguments on appeal amount to a
request to reweigh the evidence presented to the Board.
For example, Uniloc argues that “a more plausible inter-
pretation” of Vuori’s statement that presence status is in-
terpretable by “programs or persons” is that the SVM
Case: 19-1151 Document: 80 Page: 17 Filed: 02/09/2021
APPLE INC. v. UNILOC 2017 LLC 17
watcher enables an administrator, rather than a user, to
access the status information. But our task is not to deter-
mine which interpretation we find more plausible. “[I]t is
not for us to second-guess the Board’s assessment of the
evidence.” Velander,
348 F.3d at 1371. Rather, the only
question before us is whether the conclusion adopted by the
Board was supported by substantial evidence. Here, based
on Vuori’s disclosure that the user agents are “coupl[ed]” to
the SVM watcher and that the status must be reviewable
by “persons,” as well as Forys’s testimony that a person
having ordinary skill would understand that the status in-
formation is transmitted to the user agents, we conclude
that the Board’s finding that a skilled artisan would under-
stand that presence information is transmitted to the user
agents via the SVM watcher was supported by substantial
evidence. Accordingly, we affirm the Board’s conclusion
that claims 1 and 2 would have been obvious over the prior
art.
CONCLUSION
We have considered the parties’ remaining arguments
but find them unpersuasive. For the foregoing reasons, the
decision of the Board is affirmed.
AFFIRMED
