Case: 21-1651 Document: 35 Page: 1 Filed: 02/02/2022
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
SLING TV, L.L.C.,
Appellant
v.
UNILOC 2017 LLC,
Appellee
______________________
2021-1651
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2019-
01363.
______________________
Decided: February 2, 2022
______________________
ELIOT DAMON WILLIAMS, Baker Botts LLP, Palo Alto,
CA, argued for appellant. Also represented by GEORGE
HOPKINS GUY, III; ALI DHANANI, Houston, TX, KURT M.
PANKRATZ, Dallas, TX.
NATHAN K. CUMMINGS, Etheridge Law Group, South-
lake, TX, argued for appellee. Also represented by JAMES
ETHERIDGE, BRIAN MATTHEW KOIDE, RYAN S. LOVELESS,
BRETT MANGRUM.
______________________
Case: 21-1651 Document: 35 Page: 2 Filed: 02/02/2022
2 SLING TV, L.L.C. v. UNILOC 2017 LLC
Before LOURIE, DYK, and REYNA, Circuit Judges.
DYK, Circuit Judge
Sling TV, L.L.C. (“Sling”) appeals an inter partes re-
view decision of the Patent Trial and Appeal Board
(“Board”) concluding that Sling had not shown claims 1–3
of U.S. Patent No. 9,721,273 (“the ’273 patent”) to be un-
patentable. We vacate and remand.
BACKGROUND
The ’273 patent relates to providing “audio/visual
presentations via a computer network.” ’273 patent, col. 1,
ll. 36–37. The ’273 patent describes the use of Really Sim-
ple Syndication (“RSS”), a standardized data format “used
to publish [Internet] content that may be frequently up-
dated.” Id. at col. 10, ll. 64–67. An RSS feed has a single
“channel.” J.A. 722. The channel contains information
about the feed itself (such as title, link, and description), as
well as any number of “item” elements. J.A. 722, 725. Each
item element “may represent a ‘story’—much like a story
in a newspaper or magazine”—and contains metadata ele-
ments with information about the item, such as title, link,
description, author, and category, with title or description
being mandatory. J.A. 725 (“All elements of an item are
optional, however at least one of title or description must
be present.”).
Claim 1 of the ’273 patent recites the following:
A method for providing content via a computer net-
work and computing system, the method compris-
ing:
storing presentation data that represents
content of a first collection of one or more
presentations using the computer system;
Case: 21-1651 Document: 35 Page: 3 Filed: 02/02/2022
SLING TV, L.L.C. v. UNILOC 2017 LLC 3
storing data indicative of the first collection
of presentations so as to be associated with
the presentation data;
storing feed data that represents a collec-
tion of one or more feeds using the com-
puter system, wherein each of the feeds
identifies a corresponding second collection
of one or more presentations being accessi-
ble via the computer network and includes
no data representing content of the second
collection of presentations;
automatically and periodically accessing
each of the feeds to identify each of the cor-
responding second collection of presenta-
tions, using the computer system;
storing data associated with a third collec-
tion of one or more presentations; and
aggregating each of the first, identified sec-
ond, and third collections of presentations
for delivery via the computer network us-
ing a common web page.
’273 patent, col. 12, ll. 39–59. Claims 2 and 3 are depend-
ent claims that were not separately addressed by the
Board. We are concerned here with the limitation “storing
feed data that represents a collection of one or more feeds
using the computer system, wherein each of the feeds iden-
tifies a corresponding second collection of one or more
presentations being accessible via the computer network
and includes no data representing content of the second col-
lection of presentations” (hereinafter “the feed limitation”).
Id. at col. 12, ll. 46–51.
Sling petitioned the Board for inter partes review of
claims 1–3 of the ’273 patent, asserting that the claims
were obvious over U.S. Patent Application Publication No.
2008/0256443 (“Li”) as well as Li in combination with U.S.
Case: 21-1651 Document: 35 Page: 4 Filed: 02/02/2022
4 SLING TV, L.L.C. v. UNILOC 2017 LLC
Patent Application Publication No. 2008/071929 (“Motte”).
J.A. 56. In its petition, Sling argued that Li discloses the
feed limitation via its use of RSS. J.A. 82–89.
In its Final Written Decision, the Board stated that in
its institution decision, it had “misread” the petition and
“understood [Sling] to be relying on Li’s link to an RSS
channel as the claimed feed” rather than Sling’s actual po-
sition, which relies on “Li’s link to an RSS channel as the
claimed feed data and the RSS channel, itself, as the
claimed feed.” J.A. 8. The Board found that Sling’s actual
position requires a claim construction of “no data repre-
senting content” in the feed limitation to encompass
metadata, and stated that Sling’s “position on claim con-
struction only became clear at the hearing.” J.A. 8–9. The
Board determined that the “[p]atent [o]wner . . . did not
have notice and fair opportunity to present arguments and
evidence rebutting [Sling]’s theory [and f]or this reason,
[found] that [Sling] ha[d] not demonstrated by a prepon-
derance of the evidence that claims 1–3 of the ’273 patent
are unpatentable.” J.A. 13. Nonetheless, the Board ad-
dressed the merits. The Board “credit[ed] [Sling’s] state-
ment that the [p]etition relies on Li’s RSS channel” but
declined to “adopt [Sling’s] belated clarification of its claim
construction position asserting that metadata do not qual-
ify as data representing content.” J.A. 24. The Board de-
termined that because Li’s RSS channel includes
metadata, it does not disclose the feed limitation, which re-
quires that the feed “includes no data representing con-
tent.” J.A. 24–25. Because both grounds relied on Li, the
Board concluded that Sling had not shown obviousness of
the challenged claims. Sling appeals. We have jurisdiction
under 28 U.S.C. § 1295(a)(4)(A).
DISCUSSION
Claim construction is a question of law that may in-
volve underlying factual inquiries. Teva Pharms. USA,
Inc. v. Sandoz, Inc., 574 U.S. 318, 325–26 (2015). We
Case: 21-1651 Document: 35 Page: 5 Filed: 02/02/2022
SLING TV, L.L.C. v. UNILOC 2017 LLC 5
review claim constructions based solely on intrinsic evi-
dence de novo and factual findings as to extrinsic evidence
for substantial evidence. Jazz Pharms., Inc. v. Amneal
Pharms., LLC, 895 F.3d 1347, 1360 (Fed. Cir. 2018).
To the extent the Board’s decision rested on the theory
that Sling “did not sufficiently clarify its claim construction
position” in its petition, J.A. 13, that is not correct. Sling’s
petition contained an explicit mapping of the relevant ele-
ments in the feed limitation. The petition identifies, mul-
tiple times, links to RSS feeds disclosed by Li as the “feed
data” and the RSS feeds themselves as the feed:
Li discloses feed data, such as addresses of RSS
feeds. . . . Li describes that the user performs a “reg-
istration act” that sends portal server 10 an RSS
feed’s URL address (i.e., feed data). . . . Thus, Li
discloses storing feed data (addresses of RSS feeds)
that represents a collection of one or more feeds
(the user’s subscribed feeds) using the computer
system (portal server 10).
J.A. 83–84. The petition also argued:
The only specific example of a feed disclosed by the
’273 Patent is a feed based on an RSS standard.
Thus, a POSA would understand that the feature
of ‘no data representing content’ is inherent to an
RSS feed, such as that disclosed by Li.
J.A. 86 (citation omitted).
On the merits, the Board’s decision is difficult to un-
derstand. The Board expressed that “the outcome turns on
whether metadata qualifies as ‘data representing content.’”
J.A. 11. In rejecting Sling’s arguments, the Board was “not
persuaded that . . . metadata do not qualify as data repre-
senting content,” J.A. 17–18, and it “decline[d] to adopt
[Sling’s] asserted construction that metadata do not qualify
as ‘data representing content,’” J.A. 20. To the extent that
the Board suggested that Li’s use of RSS does not disclose
Case: 21-1651 Document: 35 Page: 6 Filed: 02/02/2022
6 SLING TV, L.L.C. v. UNILOC 2017 LLC
the feed limitation because it includes metadata, that can-
not be correct. The specification makes clear that RSS with
metadata would be within the claim limitation. The speci-
fication discusses embodiments in detail “with regard to
RSS 2.0 feeds,” and it mentions that the invention “may be
suitable for use with other types of content (e.g., au-
dio/video) feeds.” ’273 patent, col. 11, ll. 14–19. The speci-
fication describes the use of standard RSS in conventional
ways. Id. at col. 10, ll. 66–67 (“RSS utilizes a standardized
format.”), col. 11, ll. 27–28 (“[T]he logged on user requests
to link an RSS feed, e.g., by interacting in a conventional
manner with web page 200.”), col. 11, ll. 64–65 (Determin-
ing if new content exists “may be accomplished in any of a
number of conventional manner[s]”). The conventional
RSS standard requires including metadata, specifically ei-
ther title or description, for each item in the feed. J.A. 725.
At oral argument, Uniloc’s counsel could not identify any-
where in the ’273 patent specification disclosing an RSS
feed without metadata. Oral Arg. 16:30–17:50.
Under the Board’s interpretation of “no data represent-
ing content,” the preferred RSS embodiment would fall out-
side the scope of claim 1 because standard RSS feeds
contain metadata. “A claim construction that ‘excludes the
preferred embodiment is rarely, if ever, correct and would
require highly persuasive evidentiary support.’” SynQor,
Inc. v. Artesyn Techs., Inc., 709 F.3d 1365, 1378–79 (Fed.
Cir. 2013) (quoting Adams Respiratory Therapeutics, Inc.
v. Perrigo Co., 616 F.3d 1283, 1290 (Fed. Cir. 2010)). Be-
cause the Board’s claim construction excludes a preferred
embodiment and is inconsistent with the specification’s de-
scription of the invention, it is incorrect. 1
1 The Board suggested an apparent tension between
the construction of “presentation data that represents con-
tent” earlier in claim 1 and “no data representing content”
in the feed limitation. J.A. 20–22. We think that the
Case: 21-1651 Document: 35 Page: 7 Filed: 02/02/2022
SLING TV, L.L.C. v. UNILOC 2017 LLC 7
We think that the correct claim construction of the feed
limitation encompasses RSS feeds containing metadata,
but would exclude, for example, RSS feeds containing “the
entirety of a text story,” which the Board noted would be
within the RSS standard but outside the scope of the limi-
tation, J.A. 17. On remand, the Board should determine
whether the challenged claims in the ’273 patent would
have been obvious over Li or the combination of Li and
Motte in light of the correct construction of the feed limita-
tion.
CONCLUSION
We vacate and remand for further proceedings con-
sistent with this opinion.
VACATED AND REMANDED
COSTS
Costs to Sling TV, L.L.C.
language of the two limitations does not require the same
construction, and we further note that Sling’s petition re-
lied on Li’s disclosure of a “content library,” not Li’s use of
RSS feeds, to satisfy the “presentation data” limitation.
J.A. 78 (“Li describes storing the presentation data (thumb-
nails and titles) in a ‘content library’ of database 11 and/or
a ‘cache memory’ of portal server 10.”).