Dictionary Definitions Overshadowed by Intrinsic Evidence

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Knobbe Martens

UNILOC 2017 LLC v. APPLE INC.

Before Prost, Bryson, and Reyna. Appeal from the Patent Trial and Appeal Board.

Summary: Evidence of the plain and ordinary meaning of the term “intercepting” as set forth in dictionary definitions was outweighed by evidence of the meaning of the term in the prosecution history, specification, and context of the claims.

Apple requested an Inter Partes Review of a patent owned by Uniloc. Uniloc’s patent-at-issue is directed to a system and method of using Voice over Internet Protocol (“VoIP”). The PTAB held that certain claims of Uniloc’s patent were invalid based on obviousness in view of a prior art patent. The obviousness analysis turned on the interpretation of the claim term “intercepting.” Apple argued that “intercepting” should be construed to mean “the signaling [message] is received by a network entity located between the endpoints of the call.” Uniloc argued that “intercepting” should be construed pursuant to its plain and ordinary meaning and to exclude the receipt of a signaling message by the intended recipient of that message. The PTAB agreed with Apple’s claim construction and invalidated all but one of the independent claims based on that construction.

The Federal Circuit affirmed the PTAB’s decision. Uniloc cited various dictionary definitions to support its construction of “intercepting.” However, the Federal Circuit found that the prosecution history, specification, and context of the claims outweighed the dictionary definitions. The Federal Circuit stated 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.” Additionally, the Federal Circuit relied on the fact that Uniloc amended the claims during prosecution from “receiving” to “intercepting” to overcome prior art and Uniloc argued in an office action response that the prior art “never discloses an intermediate entity intercepting any communication between two other devices.”

Editor: Paul Stewart

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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