Uniloc v. LG Shows that Broad Software Claims are Patent Eligible, Highlights the Perils of Concession

By Scott Zimmerman
May 18, 2020

“Prior to this decision, I would have thought that the recited improvement (‘adding … an additional data field for polling’ to a message) would have been too small/minor to confer eligibility.”

https://depositphotos.com/204452938/stock-illustration-grunge-red-eligible-rubber-stamp.htmlThe Federal Circuit’s recent Uniloc v. LG Electronics decision (April 30, 2020) may be very helpful for subject matter eligibility. This Federal Circuit panel (Moore, Reyna & Taranto) held software patent claims to be patent eligible subject matter. I find the decision clearly written, with many interesting aspects. What strikes me most, though, is that seemingly very broad software patent claims were held eligible. Additionally, the decision highlights the perils of concession in a 12(b)(6) motion to dismiss.

A Faster Mouse

The invention, in very simple words, describes an improvement to Bluetooth communication between a computer and a mouse. We have all experienced a Bluetooth mouse that takes several seconds to “wake up.” The patent explains that the conventional Bluetooth messaging scheme can cause “tens of seconds” of delay (or “latency”) before the mouse wakes up and sends data. The invention uses the conventional Bluetooth messaging scheme, but it adds an “additional data field for polling” to a Bluetooth message. This “additional data field” allows the mouse “to respond a fraction of a second later.”

The District Court found the claims ineligible. On a 12(b)(6) motion to dismiss, Judge Lucy Koh (Northern District of California) found the claims were directed to the abstract idea of “additional polling in a wireless communication system,” which she analogized to ineligible “data manipulation” claims in Two-Way Media Ltd. v. Comcast Cable Communications, LLC, 874 F.3d 1329 (Fed. Cir. 2017) and to Digitech Image Technologies, LLC v. Electronics for Imaging, Inc., 758 F.3d 1344 (Fed. Cir. 2014). Moreover, she found the claims failed to recite an inventive concept.

Broad Claims Held Eligible

The Federal Circuit panel reversed. While the decision has many interesting aspects, what is most interesting to me is the breadth of the eligible claims. The claims appear to be very broad, but the panel still found that the broad claims recited enough of a computer improvement to be eligible. Prior to this decision, I would have thought that the recited improvement (“adding … an additional data field for polling” to a message) would have been too small/minor to confer eligibility. I thus find it interesting that adding an “additional data field for polling” was sufficient for eligibility.

Don’t Concede

A second interesting aspect of the decision is that, even though the claims recited a computer improvement, the panel’s decision emphasizes the advantage provided by the computer improvement. Please recall that the recited computer improvement (“adding … an additional data field for polling” to a message) reduced the response time to a “fraction of a second.” It appears that LG conceded the advantages of the recited computer improvement, but LG argued that the claims “must expressly mention the reduced latency” to be eligible. The panel disagreed, stating that the claims “need not articulate” the advantage “to be eligible.”

I can’t help but think the panel judges had everyday experience with the problem of latency—i.e., waiting for their Bluetooth mouse to wake up. When LG apparently conceded the advantages of the technical improvement, it was easy for the panel to construe most favorably to Uniloc (the non-moving party) on a 12(b)(6) motion to dismiss.

Image Source: Deposit Photos
Copyright: inueng
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The Author

Scott Zimmerman

Scott Zimmerman is a patent attorney in North Carolina with nearly 25 years’ experience. Scott focuses his practice on IP counseling and sophisticated patent prosecution for high-value, targeted claims. He has obtained over 1,000 patents for clients, including Fortune 10 companies, emerging startups, and garage inventors. Having both mechanical and electrical engineering degrees, Scott has deep technical and legal knowledge of mobile communications, computer software, computer hardware, blockchaining, automotive, and mechanical technologies. Prior to becoming a patent attorney, he spent several years as a chassis engineer for General Motors. Scott enjoys home repair/remodeling and personal fitness.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 14 Comments comments.

  1. MaxDrei May 18, 2020 11:31 am

    I note that the parallel EPO patent (1232613) issued with a claim in c-i-t form, to a Bluetooth “primary station” characterized over the prior art by means for adding an extra data field for polling. Outside the USA, you cannot get any wider than M+F language.

    Nobody expressed any opposition to the issued patent (not even the CAFC). Perhaps the EPO file stiffened sinews within the Fed Ct panel?

  2. concerned May 18, 2020 11:51 am

    “When LG apparently conceded the advantages of the technical improvement, it was easy for the panel to construe most favorably to Uniloc (the non-moving party) on a 12(b)(6) motion to dismiss.”

    I am so hoping the PTAB feels the same. My examiner conceded the process solved a problem with the administering agency’s computer network that has existed for decades.

  3. Paul Johnson May 18, 2020 12:54 pm

    If patent agents were looking to the CAFC for consistency…

  4. Anon May 18, 2020 1:14 pm

    MaxDrei,

    I am uncertain of the parallel that you appear to want to draw with c-i-t claims of some other Sovereign.

    Can you draw the point to this case in this Sovereign?

    (there is ZERO indication that THIS Sovereign went abroad to make ANY type of judgement and then applied that judgment under US law)

  5. Curious May 18, 2020 3:41 pm

    Perhaps the EPO file stiffened sinews within the Fed Ct panel?
    The Federal Circuit cares not a whit about the EPO file. Had you a modicum of understanding of US law, you would already know that.

    How many decades have you been pumping up the EPO? One would think that after all this time you would be better at it.

  6. MaxDrei May 18, 2020 4:10 pm

    Looking in from outside, one notices some distress within the USA that inventions fully protectable in Europe and elsewhere are getting refused protection in the USA and that this is causing widespread concern within interested circles within the USA.

    It would be strange if this concern had not reached the judges at appeal court level.

  7. Anon May 18, 2020 6:28 pm

    MaxDrei,

    Your posts are banal.

    I mean that with no snark.

    Yes, there are those that point out the legal issues within the US Sovereign. And do so with the precepts of US law.

    You — more often than not — do not show understanding of these US law discussions.

    Instead, as Curious points out, you post things that come across merely as a shill for the EPO Way.

    The judges at the appeal court level have MORE than heard the distress. I have long ago pointed out SEVERAL that have point blank stated that the Supreme Court has made a Royal mess out of US eligibility jurisprudence.

    I have ALSO pointed out just why the appeal court is ITSELF a mess with the psychological thought experiment of Simians in a cage, being trained with a firehose anytime they attempt to reach food hanging from the center of the cage.

    Your “maybe they are ‘aping’ the EPO way has ZERO basis in any actual point. Perhaps at one point when Judge Rader made a comparative law statement, THEN you may have had a slendor reed to develop some type of opinion to add. But what you do is not that.

    Not by a long shot.

  8. MaxDrei May 19, 2020 5:08 am

    Every country that follows the Rule of Law aspires to a system of justice that is reflected in the opening words of the Rules of Civil Procedure in the courts of England, namely:

    “1.1
    (1) These Rules are a new procedural code with the overriding objective of enabling the court to deal with cases justly and at proportionate cost.”

    When countries are making efforts to achieve that “overriding objective”, they tend to pay attention to what works elsewhere.

    There is no field of law that is more international than patent law. There is no field of law in which progress towards the overriding objective in one country is not noticed in other countries.

    In signing up to GATT-TRIPS, the USA promised to grant patents in “all fields of technology”. What a pity that The Congress did not make that clear when it promulgated the AIA. If it had, the Fed Ct and the Supreme Court would not have made such a hash of the eligibility issue in the enormously important field of medical diagnosis.

    When an invention of blockbuster importance is given patent protection under the EPC but fails under the AIA this is a raking spur, urging the courts of the USA to try harder, to judge the eligibility issue better. You find a spur on a boot, and you find the boot on the rider of the beast. Not much doubt is there, who are the riders, in the context of the multi-national patent system of the world.

  9. Anon May 19, 2020 8:58 am

    Sorry MaxDrei, but you have merely doubled down in the wrong direction here.

    You start well enough, with a “Mom and Apple Pie” who would not want this type of statement.

    But your logic immediately dumps into the weeds with YOUR proclamation of “tend to pay attention to what works elsewhere” and then accelerates with the plainly wrong “There is no field of law that is more international than patent law.

    It is quite the opposite. Patent law was, is, and ever shall be a Sovereign-Centric law.

    Yes, there are treaties – but the nature of those treaties is STILL ever-centric and merely accommodating such that the “OURS” will be respected.

    It seems that you simply cannot grasp some of the basics of law – some of the basics of patent law.

    You AGAIN double down and want your Ends that foreign law is what drives US law.

    It just is not so.

    The US battle on patent eligibility has the US players. That SOME of these US players are trans-nationals with NO allegiance to the US Sovereign appears to be a symptom that you grasp in the wrong manner.

    You simply are NOT paying enough attention — and your statement of “they tend to pay attention to what works elsewhere” is an absolute FAIL because you do not bother to recognize the conditions of one are not the same as the conditions of another.

    I have made fun of you (multiple times) in the past on this very point. The quip of you saying to someone else, “Here, wear my glasses, they work for me.” is directly on point with your statements here.

    I have even explained to you (multiple times) that treaty signing is NOT the same as the US passing an item into law. MOST ALL US treaties are NOT law. MOST ALL US treaties to be law must go an extra step and be converted into US law.

    These are not new points that I put forth today. Quite in fact, I think that these points may well be approaching a decade old in their vintage. And yet, you refuse to learn, you refuse to accept, you refuse to integrate.

    And your posts remain banal for your refusal.

  10. Night Writer May 19, 2020 3:46 pm

    The claims include a means for clause, which needs to be analyzed and put into the calculous of whether this is really a good opinion or just an allowance of claims that are overly restricted by the means for clause.

  11. MaxDrei May 20, 2020 5:13 am

    Good point from NW. Is this a “good” opinion, or not?

    Both the USPTO and the EPO allowed a claim containing the magic words “means for”. In Europe, indisputably, the claim means what its wording says, no more, no less. Thanks to 35 USC 112 though, what it means inside the USA (and only inside the USA) is anybody’s guess. Wide or narrow? Who knows? As you say, NW, it “needs to be analysed”.

    Endless hours of lawyering, eh, before anybody with a business need to know can be given anything that rises to the level of a credible legal opinion. Kerchiiiiing!

  12. Anon May 20, 2020 7:32 am

    MaxDrei,

    Your inanity is breathtaking.

    You do realize that given the doctrine of equivalents, that the ‘fall-back’ to a claim being deemed to be controlled by the ‘magic words’ provides a more limited scope than otherwise, right?

    You’ve been in this business for decades, and yet for as long as I have seen you post, you get fundamentals absolutely wrong.

  13. MaxDrei May 20, 2020 7:59 am

    Fortunately, I don’t have to write clearance opinions for a M+F claim in the USA. But suppose that the claim to a widget-making machine recites means for cutting and the two illustrated embodiments show, respectively, a reciprocatory cutting blade and a rotary cutting disc. My widget-making client envisages a conventional water jet cutter or a conventional laser beam cutter (neither of them mentioned in the patent) and wants to know whether either or both has the “means for cutting” of the claim. How long will it take, to provide a well-founded answer that question i) in the USA ii) elsewhere in the world?

  14. Anon May 20, 2020 10:04 am

    Your question of “how long” is a non-sequitor to the point of scope is less.

    Your “not having to write” does not excuse you from employing critical thinking on a legal topic that you are only too happy to comment upon.

    That is, if you care to do more than the usual banality that you spout (and per my comment, that still does not appear to be the case).