Snap, Meta and X Defeat Xerox’s Appeal of PTAB Unpatentability Ruling at CAFC

By Editorial Team

Xerox has lost an appeal to the U.S. Court of Appeals for the Federal Circuit (CAFC) against Snap, Inc., Meta, and X Corp over the Patent Trial and Appeal Board’s (PTAB’s) invalidation of Xerox’s patent on techniques for content delivery. The patent in question, U.S. Patent No. 8,489,599, titled “Context and Activity-Driven Content Delivery and Interaction,” focuses on creating and presenting content based on contextual information.

Snap, Meta, and X each filed inter partes review (IPR) petitions challenging claims of the patent using different prior art. The PTAB instituted all petitions, consolidated them, and issued a final written decision determining unpatentability collectively.

Xerox argued that the PTAB’s claim construction should be reversed, claiming that the claim limitation “determining whether the received response matches the expected response” requires the possibility of both expected and unexpected responses. However, the CAFC rejected this argument, stating that the claims do not mention an unexpected response, and Xerox failed to provide a specific construction of the limitation.

The CAFC emphasized that Xerox proposed a substitute claim that explicitly mentioned determining whether the received response is expected or unexpected, highlighting that Xerox should have written the claims accordingly if it wanted a more limited construction. The court also agreed with the PTAB’s reasoning that the claims only require determining whether the received response is the expected response or not, based on the specification’s language.

Furthermore, Xerox’s argument regarding a claim amendment made during prosecution was dismissed by the CAFC, as the amendment did not require assessing an unexpected response. The court concluded that the amendment only focused on determining whether the received response was expected.

The CAFC’s decision reaffirms the PTAB’s ruling and upholds the invalidation of Xerox’s patent by rejecting the appeal brought by Xerox against Snap, Meta, and X Corp.