“Our precedent is clear that software can make patent-eligible improvements to computer technology, and related claims are eligible as long as they are directed to non-abstract improvements to the functionality of a computer or network platform itself.” – CAFC
Yesterday, the U.S. Court of Appeals for the Federal Circuit, in an opinion authored by Judge Moore, reversed and remanded a decision of the U.S. District Court for the Northern District of California, which had found that certain claims of Uniloc’s U.S. Patent No. 6,993,049 were ineligible under Section 101 as being directed to an abstract idea. The Federal Circuit disagreed, holding that the claims at issue were directed to a “patent-eligible improvement to computer functionality.”
Uniloc sued LG for infringement of the ‘049 patent, which covers an invention that enables “‘a rapid response time without the need for a permanently active communication link’” between a parked secondary station and the primary station.”
Representative Claim 2 of the ’049 patent recites:
- A primary station for use in a communications system comprising at least one secondary station, wherein means are provided for broadcasting a series of inquiry messages, each in the form of a plurality of predetermined data fields arranged according to a first communications protocol, and for adding to each inquiry message prior to transmission an additional data field for polling at least one secondary station.
LG moved to dismiss, and the district court granted the motion, finding that the asserted claims were directed to the abstract idea of “additional polling in a wireless communication system.” The court cited Two-Way Media Ltd. v. Comcast Cable Communications, LLC, 874 F.3d 1329 (Fed. Cir. 2017) and Digitech Image Technologies, LLC v. Electronics for Imaging, Inc., 758 F.3d 1344 (Fed. Cir. 2014) to support its holding, likening Uniloc’s claims to the asserted data manipulation claims held ineligible in those cases. The court also said that the claims failed to recite an “inventive concept sufficient to save the claim[s].”
In reviewing the district court’s analysis, the Federal Circuit at Step 1 of the Alice test for determining patent eligibility pointed to recent cases in which it held claims patent eligible, including DDR Holdings, LLC v. Hotels.com, L.P; Enfish, LLC v. Microsoft Corp.; Visual Memory LLC v. NVIDIA Corp.; Ancora Technologies, Inc. v. HTC America, Inc.; Data Engine Technologies LLC v. Google; and Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc., to support their view that “the claims at issue are directed to a patent-eligible improvement to computer functionality, namely the reduction of latency experienced by parked secondary stations in communication systems.” The Court continued:
Like the claims in DDR, the claimed invention changes the normal operation of the communication system itself to “overcome a problem specifically arising in the realm of computer networks.” In doing so, the claimed invention, like the improvement in computer memory we held patent eligible in Visual Memory, enables the communication system to accommodate additional devices, such as battery-operated secondary stations, without compromising performance.
The Court distinguished the present claims from the cases relied upon by the district court to prove ineligibility, characterizing such reliance as “misplaced.” Because Uniloc’s claims are directed to “adding to each inquiry message prior to transmission an additional data field for polling at least one secondary station,” resulting in “reduced response time by peripheral devices which are part of the claimed system,” they ultimately are directed to “a specific asserted improvement to the functionality of the communication system itself,” and not the “abstract idea of performing additional polling in wireless communication systems or performing additional polling using inquiry messages” articulated by the district court. The Court concluded:
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. “To hold otherwise risks resurrecting a bright-line machine-or-transformation test, or creating a categorical ban on software patents.” Our precedent is clear that software can make patent-eligible improvements to computer technology, and related claims are eligible as long as they are directed to non-abstract improvements to the functionality of a computer or network platform itself. – citations omitted
Because the Court held the claims eligible under Alice step one, it did not proceed to step two, and therefore reversed and remanded the case.
Image Source: Deposit Photos
Image ID: 10042948