Fed. Circ. affirms mixed ruling on VoIP patent in Apple-Uniloc fight

The Apple Inc logo is shown outside the company's 2016 Worldwide Developers Conference in San Francisco, California, U.S. June 13, 2016. REUTERS/Stephen Lam
  • Apple asked to cancel Uniloc patent after infringement lawsuit.
  • Uniloc alleged FaceTime infringed VoIP patent.
  • Federal Circuit agreed much, but not all, of patent is invalid.

(Reuters) - Apple Inc has fended off a challenge at the U.S. Court of Appeals for the Federal Circuit to a largely favorable ruling from the Patent Trial and Appeal Board, which had invalidated parts of a patent that Uniloc 2017 LLC had accused Apple of infringing with its FaceTime technology.

Circuit Judge William Bryson, writing for a three-judge panel on Wednesday, rejected Uniloc's attempt to revive parts of the patent as well as Apple's request to cancel others based on an earlier patent that disclosed a similar system.

Apple's attorney Kevin Prussia of Wilmer Cutler Pickering Hale and Dorr declined to comment on the ruling.

Jim Etheridge of Etheridge Law Group, who represented Uniloc, didn't immediately respond to a request for comment.

In a 2018 complaint, one of several patent infringement complaints brought by Uniloc against Apple, the non-practicing entity alleged Apple's FaceTime video-communication feature infringed a patent related to Voice over Internet Protocol (VoIP) features such as caller-ID, call waiting, and multiple levels of service quality.

The patent specifically covers methods to control and police the use of these features, with an enforcement point in a network that captures and inspects signals between devices to ensure they're both authorized to use them.

Apple filed a petition for inter partes review of the patent at the PTAB, asking the board to declare it invalid based on a preexisting patent covering a system for "exchanging signaling messages between a calling party and a called party" using a "gate controller."

The PTAB found in 2019 that most of the patent was invalid based on the earlier patent. It rejected Apple's challenge to the remaining parts of the patent.

Bryson, joined by Chief Circuit Judge Sharon Prost and Circuit Judge Jimmie Reyna, affirmed the entire PTAB decision.

Uniloc had argued on appeal that the board misconstrued the invalidated parts of its patent to "intercept" the signal on its way to the client device, a function that the earlier patent also performed. Uniloc said its invention didn't intercept the signal because its receiver is an intended recipient of the message on its way to the client device.

"A player making an interception in football is not the intended receiver of the ball but instead seizes the ball on its way to the intended receiver," Uniloc argued, according to the opinion.

But Bryson said Uniloc's technology still "intercepts" the signal from the "intended recipient" – the client that finally receives the message – even if it was meant to.

Bryson also rejected Apple's call to invalidate the remaining parts of the patent, which were related to authorizing multiple VoIP features – as opposed to the invalidated parts, related to authorizing a single feature.

The valid parts of Uniloc's patent require determining whether a user is authorized to use two or more features in response to a single message, while the earlier system determines this in response to multiple messages, Bryson said.

The case is Uniloc 2017 LLC v. Apple Inc, U.S. Court of Appeals for the Federal Circuit, No. 20-1403.

For Uniloc: Brian Koide of Koide IP Law; and Jim Etheridge of Etheridge Law Group

For Apple: Kevin Prussia of Wilmer Cutler Pickering Hale and Dorr

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Blake Brittain reports on intellectual property law, including patents, trademarks, copyrights and trade secrets. Reach him at blake.brittain@thomsonreuters.com