Facebook wins Fed Circ appeal over VOIP patent

The Federal Circuit has affirmed a Facebook win over Australian patent assertion company Uniloc in a dispute over an instant-messaging patent.

The US Court of Appeals at the Federal Circuit have asserted in a precedential decision that several of Uniloc’s claims defending its instant voice-messaging patent, US number 8,995,433, were obvious.

Uniloc describes the ‘433 patent as a “system and method for enabling local and global instant voice over internet protocol (VOIP) messaging over an IP network” in both a “record mode” and “intercom mode”.

Facebook first filed two petitions for an inter partes review (IPR) of the ‘433 patent on May 11, 2017. In the first petition, it challenged claims 1-8 and claims 9, 12, 14, 17 of the application as obvious.

Alongside this, Apple launched its own review of the ‘433 patent in June 2017. Facebook then submitted its second IPR petition identical to Apple’s to team up in the lawsuit. Facebook’s motion to join Apple’s IPR was granted in October 2017.

In December 2017, the board gave the go-ahead for both IPRs. LG joined both Apple and Facebook shortly after.

The Patent Trial and Appeal (PTAB) board issued a final decision in the Apple IPR on May 23, 2018, upholding the patentability of all challenged claims. Six days later, it issued a decision to dismiss Facebook from the Apple IPR. However, Facebook was then estopped from its original IPR six days later.

In November 2018, the board found the claims in Facebook’s IPR to be unpatentable. Uniloc sought a rehearing before the board contending that the proceeding should have been terminated once Facebook was deemed estopped. Both cases were then brought to the Federal Circuit.

Uniloc argued that the board erred in finding that Facebook was not estopped from the challenging claim and that the board erred in its unpatentability of the claims.

The Federal Circuit ruled in favour of Facebook affirming the unpatentability claims, concluding: “We have considered Uniloc’s remaining arguments and are unpersuaded. We affirm the board’s findings of unpatentability for claims 1–12, 14–17, 25, and 26 of the ’433 patent.”

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