Thursday, May 21, 2020

Federal Circuit - Uniloc v. LG - Software Claims Not Patent Ineligible

In Uniloc v. LG, the Federal Circuit held the claims were not patent ineligible under 35 U.S.C. § 101.

As background, Uniloc sued LG for infringement of U.S. Patent No. 6,993,049 ('the 049 patent) and LG moved to dismiss the complaint under FRCP 12(b)(6) arguing the claims of the '049 patent are ineligible under 35 U.S.C. § 101.

Section 101 provides that whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof may obtain a patent, but the Supreme Court has held that "abstract ideas are not patent eligible." Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014).

In Alice, the Supreme Court stated two-steps for determining patent eligibility. A court: (1) determines whether the claims are directed to an abstract idea; and (2) if so, considers the claim elements individually and as an ordered combination to determine whether the additional elements transform the claim into a patent-eligible application.

In cases relating to software, step one often turns on whether the claims focus on specific improvements in computer or network capabilities or instead focus on a process or system that is an abstract idea for which computers are invoked merely as a tool.

The Federal Circuit reminded it has "routinely held software claims patent eligible under Alice step one when directed to improvements in the functioning of computers or network platforms itself."  The Federal Circuit then buttressed this statement by summarizing some of its patent eligibility decisions: DDR Holdings v., Enfish v. Microsoft, Visual Memory v. NVIDIA, Ancora v. HTC, Data Engine v. Google, Core Wireless v. LG.

The Federal Circuit then held the claims are directed to a patent-eligible improvement to computer functionality, namely the reduction of latency experience in parked secondary stations in communications systems.

The Federal Circuit explained:

"The claims at issue do not merely recite generalized steps to be performed on a computer using conventional computer activity. Instead, they are directed to 'adding to each inquiry message prior to transmission an additional data field for polling at least one secondary station.' See, e.g., ’049 patent at Claim 2. And this change in the manner of transmitting data results in reduced response time by peripheral devices which are part of the claimed system.

As the patent explains, for secondary stations joining a piconet in the prior art systems, “it could take half a minute or more from the time a user moves a mouse to a cursor moving on a screen.” Id. at 2:10–12. Because polling was “suspended during this cycle, for up to 10.24 seconds at a time,” parked secondary stations in prior art systems could experience similar delays after each period of inactivity. Id. at 2:13–16. The claimed addition of a data field for polling to the inquiry message significantly reduces the response time, enabling secondary stations to respond a fraction of a second later. See, e.g., ’049 patent at 5:36–41. Even LG concedes that this reduction in latency 'is the very reason for polling during the inquiry process in the first place.' Appellees’ Br. 54 (citing, e.g., J.A. 1375–77, 1394). To the extent LG argues that the claims themselves must expressly mention the reduced latency achieved by the claimed system, LG is in error.

Claims need not articulate the advantages of the claimed combinations to be eligible. We conclude that the claims at issue are not directed to the abstract idea of performing additional polling in wireless communication systems or performing additional polling using inquiry messages. These claims are directed to a specific asserted improvement to the functionality of the communication system itself.

The claimed invention’s compatibility with conventional communication systems does not render it abstract. Nor does the fact that the improvement is not defined by reference to “physical” components."

As a patent attorney, Uniloc and its predecessors define a significant patent eligibility space for claims directed to "computer and network specific improvements."

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