shutterstock_1568526061_heerapix
14 May 2021PatentsAlex Baldwin

Federal Circuit affirms PTAB ruling in Uniloc v Apple

The Federal Circuit has affirmed a Patent Trial and Appeal Board (PTAB) ruling that partly invalidated a Uniloc Voice over Internet Protocol (VoIP) patent challenged by Apple.

The panel of judges rejected Uniloc’s appeal to reinstate the patent and rejected Apple’s request to invalidate the remaining claims in a decision on Wednesday May 12.

Uniloc’s patent in dispute— US patent number 8,539,552 (‘552)—covers methods of “enforcing authorization or privileges of intelligent end-user clients to utilize or invoke services in the network.”

The patent was partially invalidated for obviousness in an inter partes review by the PTAB, but Uniloc claimed that the decision resulted from “an erroneous construction of a claim term”.

Apple argued that the PTAB erred in not invalidating the remaining ‘522 patent claims 18-22 for obviousness.

Whilst Federal Circuit affirmed the PTAB’s invalidation, it claimed Apple had “failed to demonstrate by a preponderance of the evidence that claims 18–22 are unpatentable.”

The three judges on the panel were Sharron Prost, WIlliam Bryson and Jimmie Reyna.

Case History

This case is just one part of Uniloc’s ongoing litigation against Apple and several other big-name tech companies.

Uniloc accused Apple of infringing the ‘552 patent in a complaint filed in November 2019, claiming that the tech giant had infringed its VoIP patent with its FaceTime technology, asking it to pay damages.

In response, Apple filed for an inter partes review of the patent. The PTAB ruled in 2019 that most of the patent was invalid based on prior art, but rejected Apple’s challenges against claims 18-22 of the patent.

The prior art—US Patent Number 6,324,279 or  ‘Kalmanek’—covers a system for exchanging signalling messages between a calling party and a called party.

Both Uniloc and Apple filed for a cross-appeal to the Federal Circuit following the PTAB ruling.

Uniloc litigation

Uniloc is embroiled in several patent disputes over its VoIP and messaging patents. Last month, the patent-assertion company lost another Federal Circuit case against Facebook, in which one of its voice messaging patents was invalidated.

The company also launched a separate infringement suit against Apple in September 2019, alleging infringement of its US number 6,467,088 patent.

Did you enjoy reading this story?  Sign up to our free daily newsletters and get stories sent like this straight to your inbox

Today’s top stories

Nintendo survives Gamevice’s USITC suit

Amazon’s transparency on fakes is good news for brands

Already registered?

Login to your account

To request a FREE 2-week trial subscription, please signup.
NOTE - this can take up to 48hrs to be approved.

Two Weeks Free Trial

For multi-user price options, or to check if your company has an existing subscription that we can add you to for FREE, please email Adrian Tapping at atapping@newtonmedia.co.uk


More on this story

Patents
13 July 2020   A panel of US federal judges has denied patent owner Uniloc’s request to seal documents in its infringement suit against Apple.
Patents
13 July 2017   The US Court of Appeals for the Federal Circuit has issued two non-precedential rulings that have cleared Apple, Samsung and Google from patent infringement.
Patents
3 June 2021   The US Patent Trial and Appeal Board has agreed to rehear an LED light bulb patent dispute, after admitting it “abused its discretion”.