Xerox Corp V Snap Inc
Case: 23-1983 Document: 83 Page: 1 Filed: 07/24/2025
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
XEROX CORP.,
Appellant
v.
SNAP INC., META PLATFORMS, INC., FKA
FACEBOOK, INC., X CORP.,
Appellees
______________________
2023–1983, 2023–1985, 2023–1988
______________________
Appeals from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in Nos. IPR2021–
00987, IPR2021–01294, IPR2021–01458.
______________________
Decided: July 24, 2025
______________________
JAMES ELROY QUIGLEY, McKool Smith, P.C., Austin,
TX, argued for appellant. Also represented by KEVIN L.
BURGESS, Marshall, TX; ALEXANDRA FIGARI EASLEY, DAVID
SOCHIA, Dallas, TX.
PHILLIP EDWARD MORTON, Cooley LLP, Washington,
DC, argued for appellee Meta Platforms, Inc. Also repre-
sented by HEIDI LYN KEEFE, ANDREW CARTER MACE, MARK
R. WEINSTEIN, Palo Alto, CA.
Case: 23-1983 Document: 83 Page: 2 Filed: 07/24/2025
2 XEROX CORP. v. SNAP INC.
YAR R. CHAIKOVSKY, White & Case LLP, Palo Alto, CA,
argued for appellee Snap Inc. Also represented by DAVID
OKANO; NAVEEN MODI, JOSEPH PALYS, Paul Hastings LLP,
Washington, DC.
DEBRA JANECE MCCOMAS, Haynes and Boone, LLP,
Dallas, TX, argued for appellee X Corp. Also represented
by DAVID L. MCCOMBS; ADAM LLOYD ERICKSON, ANGELA M.
OLIVER, Washington, DC.
______________________
Before HUGHES, CUNNINGHAM, and STARK, Circuit Judges.
HUGHES, Circuit Judge.
Xerox appeals a decision holding unpatentable all
claims of its patent, U.S. Patent No. 8,489,599, in a series
of consolidated inter partes review proceedings initiated by
Appellees Snap, Inc.; Meta Platforms, Inc.; and X Corp. Be-
cause we affirm the Board’s claim construction, which is
the dispositive issue in Xerox’s appeal to the IPR challenge
filed by Snap, we affirm the Board’s decision holding un-
patentable all challenged claims.
I
The ’599 patent is entitled “Context and Activity-
Driven Content Delivery and Interaction” and issued on
July 16, 2023, from an application filed on December 2,
2008. J.A. 166. The ’599 patent is directed “to techniques
and systems for creating and presenting content based on
contextual information.” J.A. 171 (1:9–11). In one embodi-
ment, a “computing device receives a set of contextual in-
formation with respect to the user, and processes the
contextual information to determine whether some aspect
of the current context can be associated with a probable ac-
tivity being performed by the user.” J.A. 171 (1:52–56).
“Contextual information” includes “input data that is gath-
ered by a computing device” and “reflects basic information
Case: 23-1983 Document: 83 Page: 3 Filed: 07/24/2025
XEROX CORP. v. SNAP INC. 3
associated with the user and/or the operating environment
of the computing device,” like the time of day. J.A. 173
(6:15–19, 6:30–33). This contextual information is used to
determine some aspect of the user’s context, which is “a set
of data that describes an event or environmental factor as-
sociated with a user” that can be “inferred from contextual
information,” and includes things such as “whether the
user is sitting down, watching TV, [or] asleep.” J.A. 174
(7:36–41, 7:46–49). The computing device then processes
that contextual information to determine whether it satis-
fies a predetermined trigger condition and presents content
to the user if it does. J.A. 171 (1:50–62). A “trigger condi-
tion” can be, for example, a time of day, a day of the week,
or a location. J.A. 172 (3:64–4:3). An example of use is to
“remind the user to buy groceries [i.e., presenting content]
as the user is driving past a grocery store after work [i.e.,
contextual information that triggers a condition for pre-
senting the content].” J.A. 173 (5:27–30).
The ’599 patent further provides that “[i]n a variation
on this embodiment, the computing device presents the se-
lected content by following a number of pre-defined or user-
defined presentation rules associated with the selected con-
tent, monitoring actions performed by the user, and pre-
senting the selected content based on the actions
performed by the user.” J.A. 171 (2:32–37). Presentation
rules may specify an expected response and actions to take
based on whether a user provides the expected response.
J.A. 175–76 (10:34–11:41; Table 1). An “expected response”
can include a simple “OK” to dismiss an alert. J.A. 176–77
(11:27–28, 12:45–56, 13:64–14:4; Table 2).
Independent claim 1 is illustrative:
1. A method for delivering context-based con-
tent to a first user, the method comprising:
receiving at least one content package,
wherein the content package includes at least
one content piece and a set of rules associated
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4 XEROX CORP. v. SNAP INC.
with the content package, wherein the set of
rules includes a trigger condition and an ex-
pected response, and wherein the trigger con-
dition specifies a context that triggers a
presentation of the content piece;
receiving a set of contextual information with
respect to the first user;
processing the contextual information to de-
termine a current context for the first user;
determining whether the current context sat-
isfies the trigger condition;
in response to the trigger condition being sat-
isfied, presenting the content piece to the first
user;
receiving a response from the first user corre-
sponding to the presented content piece;
determining whether the received response
matches the expected response; and
performing an action based on an outcome of
the determination.
On May 21, 2021, Snap filed a petition for IPR chal-
lenging all claims of the ’599 patent. On July 20, 2021,
Meta 1 filed a petition for IPR challenging claims 1, 4, 6–7,
1 At the time its IPR petition was filed, Meta was
known as “Facebook, Inc.” The company changed its corpo-
rate name to “Meta Platforms, Inc.” in October 2021. This
Court granted a motion to amend the case caption to re-
place Facebook, Inc. with Meta as the appellee in February
2024. Meta and X’s Response Br. at 1 n.1.
Case: 23-1983 Document: 83 Page: 5 Filed: 07/24/2025
XEROX CORP. v. SNAP INC. 5
9–12, 15, 17–19, 22, 24–25 of the ’599 patent; X 2 filed a pe-
tition for IPR challenging claims 1, 4, 6–7, 9–12, 15, 17–18
on August 31, 2021. Each petition relied on different prior
art. The Board instituted the Snap, Meta, and X IPRs in
November 2021, January 2022, and April 2022 respec-
tively. The Board consolidated the three IPR proceedings
and issued a single final written decision on March 24,
2023, concluding the Petitioners had collectively estab-
lished all of the ’599 patent claims were unpatentable. 3
Xerox timely filed its notices of appeal for all three
IPRs. 35 U.S.C. § 142, 37 C.F.R. § 90.3(a)(1). We have ex-
clusive jurisdiction over this appeal under 35 U.S.C.
§ 141(c) and 28 U.S.C § 1295(a)(4)(a).
II
“Claim construction is a legal issue reviewed de novo,
based on underlying factual findings that are reviewed for
substantial evidence.” Pers. Web Techs., LLC v. Apple, Inc.,
848 F.3d 987, 990 (Fed. Cir. 2017).
2 At the time its IPR petition was filed, X was known
as “Twitter, Inc.” The company has since changed its cor-
porate name to “X Corp.” X Corp. was named as the appel-
lee at the time the appeal before us was docketed.
3 In each of the IPRs, Xerox filed substantively iden-
tical Contingent Motions to Amend to substitute claims
26–40 for claims 1, 4, 6, 7, 9–12, 15, 17–19, 22, 24, and 25.
The Board determined Meta and X had demonstrated that
the substitute claims, which added limitations to the origi-
nal independent claims, were unpatentable as obvious and
as patent-ineligible. J.A. 149––61. On appeal, Xerox does
not challenge the Board’s determination that its substitute
claims are unpatentable; its appeal is limited to the Board’s
decision holding the original claims unpatentable. Xerox’s
Opening Br. 13.
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6 XEROX CORP. v. SNAP INC.
Xerox’s challenges on appeal all depend on reversing
the Board’s claim construction. It is undisputed that Snap’s
cited prior art renders all claims of the ’599 patent obvious
under the Board’s claim construction. The parties all agree
that, if we affirm the Board’s claim construction, we can
affirm the Board’s decision holding all claims unpatentable
under Snap’s IPR. See Meta and X’s Response Br. 2 n.2
(“The claim construction argument regarding an ‘unex-
pected response’ is a dispositive issue in Xerox’s appeal to
the IPR challenge filed by Snap Inc.”); Oral Argument 4 at
4:45–5:00 (Xerox), 12:08–12:14 (Snap); 18:45–19:00 (Meta);
20:06–20:12 (X’s counsel stating “ditto” following Meta’s
oral argument).
Xerox argues that the Board erred in rejecting Xerox’s
argument that the claim limitation “determining whether
the received response matches the expected response” re-
quires the possibility of both expected and unexpected re-
sponses being the received response. 5 Specifically, Xerox
argues that this claim limitation requires the explicit dis-
closure of the possibility of an unexpected response. Xerox
contends that the Board’s construction is inconsistent with
the claim language, ’599 patent specification, and the pros-
ecution history. We disagree.
The claims do not recite an unexpected response, nor
does the specification ever mention an “unexpected re-
sponse.” While Xerox accuses the Board of engaging in “hy-
perliteralism” and “linguistic summersaults” in making
this observation, it provides only vague references to “the
claims” as requiring the “possibility of both expected and
4 Available at https://oralarguments.cafc.uscourts
.gov/default.aspx?fl=23–1983_06032025.mp3.
5 Xerox never articulated, either to the Board or on
appeal, an express construction that it believes is the
proper construction of this claim limitation. See Oral Argu-
ment at 20:25–45.
Case: 23-1983 Document: 83 Page: 7 Filed: 07/24/2025
XEROX CORP. v. SNAP INC. 7
unexpected responses be [sic] the received response” with-
out providing detail on where the claims describe these op-
tions or which exact limitations require this possibility.
Xerox’s Opening Br. 16, 21 (emphasis omitted). The claims
recite determining whether the received response matches
the expected response. This is one determination related to
one type of response—the expected response. Our analysis
can end here.
In Resonate Inc. v. Alteon Websystems, Inc., 338 F.3d
1360, 1365 (Fed. Cir. 2003), we rejected a similar attempt
to import limitations into a claim that were not recited in
the claim nor provided for by the specification, noting
“[c]ourts may not rewrite claim language based on what
has been omitted from a claim.” If Xerox wanted its more
limited construction, it should have written the claims as
it did in its proposed substitute claims. Xerox’s proposed
substitute claim 26, which was advanced by Xerox to re-
place original claim 1, recites, in relevant part, “determin-
ing whether the received response . . . is expected or
unexpected, wherein the received response is expected if the
received response matches one or more of the at least one
predefined response, and wherein the received response is
unexpected if the received response does not match any of
the at least one predefined response.” J.A. 134–35 (deleted
portions of original claim 1 omitted) (emphasis on added
portions). See generally Woods v. DeAngelo Marine Ex-
haust, Inc., 692 F.3d 1272, 1284 (Fed. Cir. 2012) (declining
to import a limitation into the construction of “elongated
outer shell” in part because claims in a related abandoned
patent application explicitly required the limitation).
The ’599 patent’s specification further supports the
Board’s construction. For example, Table 1 of the ’599 pa-
tent, reproduced below, presents “an exemplary set of rules
for presenting [a] content package to a user.” J.A. 176
(11:11–12). The table’s entries “correspond to a number of
Case: 23-1983 Document: 83 Page: 8 Filed: 07/24/2025
8 XEROX CORP. v. SNAP INC.
audio clips in Japanese for practicing pronunciations of a
number of words.” J.A. 176 (11:13–15).
The table specifies the expected user response to the
playing of different audio clips, which is triggered based on
a set of conditions including time, location, and state, is for
the user to correctly mimic the played audio. The table pro-
vides actions based on whether the user correctly mimics
the phrase: suspend for 7 days if correct or suspend for 5
minutes if incorrect.
The Board cited the ’599 patent’s explanation, J.A. 177
(13:1–7), that the “action incorrect column entry can obtain
a value that specifies an action to be performed by content
management system 240 on the occasion that the user does
not provide an expected response” to support its conclusion
that the claims merely require determining whether the re-
ceived response is the expected response or not. J.A. 17
(emphasis in original). There is no basis for importing a re-
quirement into the claims that there be an additional de-
termination about whether the received response is an
unexpected response. The Board correctly concluded
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XEROX CORP. v. SNAP INC. 9
Xerox’s “assertions that ‘unexpected response’ should be in-
cluded in the claim term amounts to impermissibly at-
tempting to write a limitation into the claim” and declined
to adopt Xerox’s construction. J.A. 21–22.
Xerox lastly argues that a claim amendment in the
prosecution history supports its construction. Xerox’s
Opening Br. 32. The originally filed claim required “deter-
mining whether either or both the context and a current
activity of the first user satisfy a trigger condition,”
J.A. 3432; the amendment in question added a step to de-
termination whether there is a match between a received
response and an expected response as recited in the issued
claim to overcome a rejection. Compare J.A. 3432–40, with
J.A. 3721–23. Nothing about this amendment (which any-
way relates to a different claim limitation) requires as-
sessing an unexpected response as such; it only requires
determining whether the received response was expected,
and this is how the applicant explained the amendment to
the Examiner, J.A. 3721–22, without any reference to an
unexpected response, J.A. 3789–90, 3795. The Board
properly rejected Xerox’s proposed claim construction as
unsupported by all offered intrinsic evidence.
III
We have considered Xerox’s remaining arguments re-
garding claim construction and find them unpersuasive.
Because we affirm the Board’s decision holding all chal-
lenged claims unpatentable in the Snap IPR, we need not
reach Xerox’s arguments regarding the Meta and X IPRs.
Because we agree with the Board’s claim construction, we
affirm the Board’s decision holding all claims of the ’599
patent unpatentable.
AFFIRMED