“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.”
The 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.
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.
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