June 12, 2021

Intrinsic Evidence > Dictionary Definitions, Analogies, and Purported Plain Meaning

In Uniloc 2017 LLC v. Apple Inc., [2020-1403, 2020-1404] (May 12, 2021), the Federal Circuit affirmed the PTAB determination that claims 1 – 17 and 23 – 25 of U.S. Patent No. 8,539,552 were invalid for obviousness.

The ’552 patent is directed to a system and method to police the use of various optional features, such as caller-ID, call waiting, multi-line service, and different levels of service quality known as the “codec specification.”

On appeal, Uniloc contended that the Board’s construction of “intercepting” in the independent claims was erroneous and that the Board incorrectly held claims 1–17 and 23–25 invalid as a result. In its cross-appeal, Apple argued that the Board erroneously rejected its challenge to claims 18–22.

As to Unilock’s appeal, the Federal Circuit noted that just because the receiving client device is the ultimate “intended recipient” does not mean that the sending client device cannot intentionally direct the message to the intercepting entity. The Federal Circuit further held that the claims encompass the situation in which a sending client device intentionally sends a signaling message to the intermediate network entity that per-forms the interception.

Contrary to Uniloc’s contention, the Federal Circuit said that construction is not at odds with the plain meaning of the claims. The receiving client device is still “the intended recipient” of the message because it is the ultimate, intended destination of that message.

The Federal Circuit further further noted that the Board’s construction is supported by the prosecution history. The Federal Circuit said it arrived at its construction by focusing on the prosecution history, the specification, and the context of the particular claims in which the term “intercepting” appears, which outweighed Uniloc’s reliance on dictionary definitions, analogies, and the purported plain meaning of “intercepting” in isolation.