Federal Circuit Partly Reverses VoIP Patent Dispute in Facebook’s Favor

A non-precedential decision issued by the Federal Circuit sided with Facebook Inc. and WhatsApp Inc. (collectively, Facebook) over Uniloc 2017 LLC in cross-appeals from two inter partes reviews (IPRs). Facebook filed the suit over purported validity issues with a Uniloc patent addressing instant voice messaging by use of voice-over-internet-protocol (VoIP) communications. 

Last Friday’s opinion explained that the asserted patent, U.S. Patent No. 8,724,622, states that “a local, packet-switched IP network connects an instant voice message client, such as a telephone or a telephony-capable computer, to a local instant voice message server.” Other patent features reportedly include record mode, which turns the user’s recorded speech into a digitized audio file, and a saving feature employed when the recipient is not connected to the server, preserving the message and delivering it once they connect.

Facebook challenged various claims of the ’622 patent in two IPR petitions filed with the Patent and Trademark Office. In January 2019, the Office’s Patent Trial and Appeal Board (PTAB) concluded that all challenged claims were unpatentable for obviousness, except for dependent claims 4 and 5.

Both parties appealed. The panel rejected Uniloc’s contentions about the claims’ validity, while finding that the PTAB “misunderstood” Facebook’s IPR petitions concerning claims 4 and 5. 

In particular, Uniloc unsuccessfully contended that the PTAB committed reversible error through key factual determinations when it construed two of the patent’s claims. The panel held otherwise, determining that substantial evidence supported the decision, like expert testimony.

For its part, Facebook cross-appealed the PTAB’s determination that it did not prove claims 4 and 5 unpatentable for obviousness. Specifically, the opinion said, Facebook asserted that the PTAB overlooked a portion of the company’s argument. 

“Because the Board’s misunderstanding of Facebook’s submissions infected its assessment of claims 4 and 5, we must set aside the Board’s determination regarding those claims,” the filing said. As such, the panel vacated the decision and remanded the case “for any further proceedings that may be warranted.”

Uniloc is represented by Etheridge Law Group and Facebook by Cooley LLP.