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IP News

By Howard Shire and Shaleen Patel
June 01, 2021

Federal Circuit Invalidates Parts of VoIP Patent

Uniloc 2017 LLC v. Apple, Inc.

In a near total victory for Apple, the Federal Circuit affirmed a decision by the Patent Trial and Appeal Board (PTAB) rendering invalid certain claims of U.S. Patent No. 8,539,552 (the '552 Patent) owned by Uniloc 2017 LLC (Uniloc), because of obviousness. Specifically, the court found claims 1-17 and 23-25 obvious, while claims 18-22 remained patentable.

The '552 Patent is directed to a system and method to police features associated with telecom systems using Voice over Internet Protocol (VoIP), such as caller-ID, call waiting, multi-line services, and codec specification. The patent recognizes that the proliferation of intelligent client devices in communication networks requires providers to maintain control over the use of their networks' features in order to continue generating revenue. To achieve that control, the patented system employs an enforcement mechanism within the provider's core network through which clients send "signaling messages" for setting up their communication sessions. Because the enforcement point sits between the sender of the communication and the intended recipient, the provider can inspect the signaling messages and ensure that both ends of the communication are authorized to use particular features.

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