Xerox Corp. v. Meta Platforms, Inc., Fka Facebook, Inc.

N OTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
XEROX CORP.,
Appellant
v.
META PLATFORMS, INC., FKA FACEBOOK, INC.,
Appellee
______________________
2023-1912
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2021-
01472.
______________________
Decided: March 25, 2025
______________________
L AUREN HILLARY S IMENAUER , McKool Smith, P.C.,
Washington, DC, argued for appellant. Also represented
by K EVIN L. BURGESS , Marshall, TX; ALEXANDRA F IGARI
EASLEY , D AVID SOCHIA, Dallas, TX; J AMES ELROY Q UIGLEY ,
K YLE N. RYMAN, J OEL L ANCE T HOLLANDER, Austin, TX.
HEIDI L YN K EEFE , Cooley LLP, Palo Alto, CA, argued
for appellee. Also represented by ANDREW CARTER MACE,
MARK R. WEINSTEIN; P HILLIP EDWARD MORTON, Washing-
ton, DC.
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XEROX CORP. v. META PLATFORMS, INC. 2
______________________
Before T ARANTO and HUGHES , Circuit Judges, and
BARNETT , Judge.1
BARNETT , Judge.
Xerox Corp. (“Xerox”) appeals the final written decision
issued by the Patent Trial and Appeal Board (“Board”) in
an inter partes review (“IPR”) of U.S. Patent No. 9,137,190
B2 (“the ’190 patent”), holding that claims 9–16 are un-
patentable as obvious. Facebook, Inc. v. Palo Alto Research
Center LLC, No. IPR2021-01472, 2023 WL 2600581
(P.T.A.B. Mar. 2, 2023) (“Final Written Decision”).2 We af-
firm.3
I. BACKGROUND
In 2021, Meta filed a petition for an IPR of claims 9–16
of the ’190 patent. J.A. 82, 151. Meta asserted two grounds
for finding the challenged claims unpatentable as obvious.
J.A. 91, 150.4 Claim 9, the only independent claim at issue,
states, inter alia:
1 Honorable Mark A. Barnett, Chief Judge, United
States Court of International Trade, sitting by designation.
2 Subsequent citations in this opinion are to the ver-
sion of the Board’s decision in the Joint Appendix. See J.A.
1–52.
3 Following issuance of the Final Written Decision,
Palo Alto Research Center LLC assigned its interest in the
’190 patent to Xerox. Appellant Br. at 1 n.1. During the
pendency of this appeal, the court granted Appellee’s mo-
tion to modify the caption to reflect its corporate name
change to Meta Platforms, Inc. (“Meta”). Dkt. No. 23.
4 The first ground consisted of obviousness over
Heidloff, Riggsby, RFC 5233, Low, and RFC 2369. J.A. 91.
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XEROX CORP. v. META PLATFORMS, INC. 3
9. A method for content-based message distribu-
tion, comprising the steps of:
[(a)] receiving an incoming message with a
recipient address and a tag address com-
prising one or more content tags, each of
the content tags associated with one or
more users;
. . .
[(c)] adding the recipient to the at least one
content tag as one of the users;
[(d)] displaying the incoming message to at
least one of the users associated with the at
least one content tag . . . .
J.A. 66 (referred to herein as claims 9(a), 9(c), and 9(d), re-
spectively). The Board instituted the requested IPR on
both grounds. J.A. 221.
Following institution, Xerox filed its response, and
Meta replied. J.A. 250, 301. Xerox filed a sur-reply, J.A.
332, indirectly raising, for the first time, an issue of claim
construction regarding claim 9(d), J.A. 6; see also J.A. 337.
The Board heard oral argument on December 7, 2022. See
J.A. 371.
In the Final Written Decision, the Board found Xerox’s
arguments regarding the proper interpretation of the “dis-
playing” limitation of claim 9 to be untimely and thus im-
proper pursuant to the Board’s rules because those
arguments were first presented in the sur-reply and not in
Xerox’s response. J.A. 6–7. The Board further stated that
“even if [it] consider[s] [Xerox’s] argument as a proper re-
sponse under [the Board’s] rules,” then Xerox’s “proposed
The second ground consisted of obviousness over those ref-
erences and the addition of Hazel. J.A. 150.
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XEROX CORP. v. META PLATFORMS, INC. 4
interpretation of the claims is incorrect.” J.A. 7; see also
J.A. 8–15. In short, the Board concluded that claim 9(d)
“does not require displaying the tag address and the recip-
ient address, although claim 9 clearly requires that these
addresses be received with the message.” J.A. 14 (empha-
sis added).
The Board also found Meta’s arguments and evidence
supported the finding that the steps comprising claim 9
would have been obvious to a person of ordinary skill in the
art based on the asserted combination of prior art. J.A. 44.
Xerox timely appeals the Board’s claim construction
with respect to claim 9(d) and its obviousness determina-
tions with respect to claim 9(a) and (c). We have jurisdic-
tion pursuant to 28 U.S.C. § 1295(a)(4)(A).
II. D ISCUSSION
We review the Board’s procedural rulings for abuse of
discretion. Ericsson Inc. v. Intell. Ventures I LLC, 901 F.3d
1374, 1379 (Fed. Cir. 2018). We review legal determina-
tions de novo and underlying factual findings for substan-
tial evidence. See id.; Seabed Geosolutions (US) Inc. v.
Magseis FF LLC, 8 F.4th 1285, 1287 (Fed. Cir. 2021).
“What the prior art discloses and whether a person of
ordinary skill would have been motivated to combine prior
art references are both fact questions that we review for
substantial evidence.” Intel Corp. v. PACT XPP Schweiz
AG, 61 F.4th 1373, 1378 (Fed. Cir. 2023).
A.
Xerox contends we should review the Board’s claim con-
struction notwithstanding the Board’s initial untimeliness
finding because the Board also addressed the merits. Ap-
pellant Br. at 27 (citing Conoco, Inc. v. Energy & Env’t Int’l,
L.C., 460 F.3d 1349, 1359 (Fed. Cir. 2006)). We decline to
do so because Xerox forfeited any argument that the Board
abused its discretion in finding Xerox’s arguments
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XEROX CORP. v. META PLATFORMS, INC. 5
regarding the “displaying” limitation to be untimely, and
because that finding of untimeliness is a sufficient basis to
affirm.
On the issue of timeliness, Xerox asserts, in a conclu-
sory manner, that “Xerox did not fail to timely disclose or
waive any argument related to the proper reading of [the
displaying] limitation.” Id. (citing O2 Micro Int’l Ltd. v.
Beyond Innovation Tech. Co., 521 F.3d 1351, 1362 (Fed.
Cir. 2008)).5 Xerox’s failure to develop any argument that
the Board abused its discretion means Xerox has forfeited
that argument. See, e.g., SmithKline Beecham Corp. v.
Apotex Corp., 439 F.3d 1312, 1319 (Fed. Cir. 2006); see also
In re Google Tech. Holdings LLC, 980 F.3d 858, 862 (Fed.
Cir. 2020) (defining forfeiture as “the failure to make the
timely assertion of a right,” whereas waiver is defined as
“the intentional relinquishment or abandonment of a
known right”).
Conoco is not to the contrary. There, the district court
construed a claim term sua sponte following a bench trial,
and we reviewed the court’s claim construction de novo.
Conoco, 460 F.3d at 1359. Post-Conoco, however, in In re
Google we reaffirmed the “permissive, discretionary, and
context-driven” nature of the review of untimely argu-
ments that were passed upon in the alternative. 980 F.3d
at 864. Moreover, we have affirmed a Board untimeliness
determination based on forfeiture and found the
5 Xerox’s reliance on O2 Micro is unavailing. Xerox
suggests the Board must conduct claim construction “re-
gardless of when a party raises claim construction.” Appel-
lant’s Reply at 13 (citing O2 Micro, 521 F.3d at 1362). In
that case, however, we remanded for the district court to
conduct claim construction because that court had improp-
erly submitted the meaning of claim terms to the jury. O2
Micro, 521 F.3d at 1362–63. O2 Micro has no bearing on
our review of the Board’s procedural ruling here.
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XEROX CORP. v. META PLATFORMS, INC. 6
untimeliness holding to “constitute[] an independent
ground for [the Board’s] decision” even if the Board finds
the untimely argument unpersuasive on its merits. LSI
Corp. v. Regents of Univ. of Minn., 43 F.4th 1349, 1355
(Fed. Cir. 2022); cf. Intelligent Bio-Sys., Inc. v. Illumina
Cambridge Ltd., 821 F.3d 1359, 1369–70 (Fed. Cir. 2016)
(stating that because “the Board did not abuse its discre-
tion in excluding [untimely] documents, we need not . . .
review the Board’s conclusion that, even if proper, the ar-
guments contained in the reply brief are unpersuasive”).
We thus affirm the Board’s holding that Xerox untimely
raised its proposed construction of the “displaying” limita-
tion because Xerox forfeited any challenge to that holding
by failing to develop, in its Opening Brief, any argument
that the Board abused its discretion. The Board’s untime-
liness holding is an independent ground for its decision
upon which we may, and do, affirm, notwithstanding the
Board’s consideration and rejection of Xerox’s belatedly
proposed claim construction.
B.
Xerox contests the Board’s determination that the prior
art renders obvious the “receiving” limitation in claim 9(a).
Xerox focuses on the Board’s reference to Heidloff’s expla-
nation that “[t]he user interface further allows for receipt
of a user-provided natural language destination address
value” as a basis for the Board’s determination that it
would have been obvious to include a recipient address, i.e.,
a conventional email address. J.A. 25 (alteration in origi-
nal); see also Appellant Br. at 38.6 Xerox argues Meta
6 In its reply, Xerox argues Heidloff teaches away
from the claimed limitation and Meta forfeited any reliance
on the user interface disclosure. Appellant’s Reply at 18–
21. We need not, and thus do not, consider an argument
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XEROX CORP. v. META PLATFORMS, INC. 7
failed to identify this disclosure in its IPR petition and
Heidloff’s disclosure does not teach receiving an incoming
message with a recipient address. Appellant Br. at 38.
Meta argues substantial evidence supports the Board’s de-
termination and Xerox forfeited its arguments regarding
the Heidloff user interface by failing to present them to the
Board. Appellee Br. at 46–52.
As an initial matter, Meta did not fail to identify
Heidloff’s disclosure in its petition: Meta contended that
the inclusion of a “recipient address,” though not disclosed
in Heidloff, would have been obvious to a relevant artisan
and cited to a portion of its expert report discussing the rel-
evant sentence in Heidloff. J.A. 120 (citing J.A. 642–47
¶¶ 85–87); see also J.A. 643–44 ¶¶ 85–86 (“Riggsby thus
discloses at least two situations where the sender of an
email in Heidloff may want to identify a ‘recipient address’
for an individual person, in addition to a natural language
address for purposes of publishing to a group (Heidloff, e.g.,
3:5–10).” (emphasis omitted)). Thus, Xerox’s argument
that the Board improperly relied on this disclosure lacks
merit.
Xerox’s second argument, that Heidloff’s disclosure
does not teach including a recipient address at all, is also
untimely. Before the Board, Xerox argued that Heidloff
does not disclose the “receiving” limitation because the re-
cipient address used in Xerox’s annotated version of
Heidloff’s Figure 1 does not appear in the message enve-
lope. J.A. 23–24; J.A. 269–73. The Board rejected this ar-
gument because Xerox’s version of Figure 1 demonstrates
the inclusion of a recipient address with the forwarded
raised for the first time in a reply brief. Fuji Photo Film
Co. v. Jazz Photo Corp., 394 F.3d 1368, 1375 n.4 (Fed. Cir.
2005) (declining to address an argument minimally raised
in an opening brief and more fully addressed in a reply
brief).
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XEROX CORP. v. META PLATFORMS, INC. 8
message and “[t]he claim does not require that the recipi-
ent address be located in the envelope.” J.A. 24. Xerox now
argues that it would not have been obvious to include a re-
cipient address at all. Appellant Br. at 38–39. “Because
[Xerox] never presented to the Board the non-obviousness
arguments it now raises on appeal, we find those argu-
ments [forfeited].” Acoustic Tech., Inc. v. Itron Networked
Sols., Inc., 949 F.3d 1360, 1366 (Fed. Cir. 2020).
C.
Xerox contests the Board’s determination that the prior
art renders obvious the “adding” limitation in claim 9(c).
Xerox argues the Board erred in finding the combination of
Heidloff, RFC 5233, Riggsby, and Low renders obvious the
“adding” limitation because a person of ordinary skill
“would not be motivated to add Low to the proposed prior
art combination.” Appellant Br. at 39–40. Meta argues
that substantial evidence supports the Board’s determina-
tion. Appellee Br. at 52.
Xerox argues the Board’s explanation with respect to
adding Low amounted to a single conclusory sentence. Ap-
pellant Br. at 43 (“[Meta’s] proposed combination may also
apprise a user of information in which the user may have
an interest.” (quoting J.A. 36)). Xerox, however, ignores
the Board’s additional discussion of Low’s disclosures and
the entirety of the Board’s explanation. See J.A. 36–39 (cit-
ing, inter alia, J.A. 707 ¶ 137) (crediting Meta’s expert tes-
timony that the proposed combination with Low “provides
a compelling benefit” of notifying users of new messages
and considering both the advantages and disadvantages of
the combination); J.A. 33 (citing J.A. 678–79 ¶ 113) (simi-
lar); J.A. 45–46. Accordingly, Xerox’s argument lacks
merit.
The Board also “acknowledge[d] that there are down-
sides to [Meta’s] proposed combination, including that a
user will be added to a category in which he or she may not
be interested,” and concluded that “the flooding problem,”
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XEROX CORP. v. META PLATFORMS, INC. 9
i.e., the receipt of many unwanted emails, “is alleviated by
Riggsby’s newsletter service, which is how the user is noti-
fied of new documents and which runs every night.” J.A.
36.7 Xerox argues the Board did not explain “how or why
a newsletter aggregating new documents would prevent
spam and flooding,” Appellant Br. at 42, but the Board spe-
cifically noted that Riggsby’s newsletter service runs on a
nightly basis, J.A. 36, and thus would not lead to the “ex-
ponential increase in unwanted email” envisioned by
Xerox, J.A. 46 (quoting J.A. 289); see also J.A. 33 (citing
J.A. 678 ¶ 113) (crediting expert testimony explaining that
Riggsby’s newsletter service strikes a beneficial balance
“because it keeps users apprised of new documents of in-
terest without requiring them to constantly check” and fur-
ther noting that “[t]he daily frequency would also address
Heidloff’s concern of flooding users with emails”); J.A. 45
(further discussing Riggsby combined with Heidloff). We
find no reversible error in the Board’s conclusion that a
skilled artisan would be motivated to combine the proposed
references.
For the reasons stated, we find that substantial evi-
dence supports the Board’s determination that the “add-
ing” limitation would have been obvious based on the
combination of Heidloff, RFC 5233, Riggsby, and Low.
III. CONCLUSION
We have considered Xerox’s remaining arguments and
find them unpersuasive. We affirm the Board’s Final
7 Xerox argues the Board erred in relying on
Riggsby’s newsletter feature because Meta never advanced
such an argument. Appellant Br. at 41. The Board consid-
ered and rejected the argument that Meta’s reliance on
Riggsby was untimely. J.A. 36–37. Xerox’s Opening Brief
makes no effort to address the Board’s findings, which are
amply supported.
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XEROX CORP. v. META PLATFORMS, INC. 10
Written Decision finding claims 9 through 16 unpatentable
as obvious.
AFFIRMED
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