A Broad Claim Directed to an Addition of a Data Field to a Communication Message Held Patent Eligible
In Uniloc USA, INC. v. LG Electronics USA, INC., No. 19-1835 (Fed. Cir., April 30, 2020), the U.S. Court of Appeals for the Federal Circuit held patent eligible a claim directed a communications system including a primary station (e.g., personal computer 100) and a secondary station (e.g., a wireless mouse 101), where the primary station (100) is arranged to broadcast a series of modified inquiry messages including an additional data field for polling the secondary station (101). This system provides the secondary station (101) with a rapid response time without the need for a permanently active communication link between the secondary station (101) and the primary station (100).
Uniloc sued LG for the infringement of U.S. Patent No. 6,993,049 (“the ‘049 Patent”) directed toward a wireless communications system with an additional transferred data field to improve response time. LG moved to dismiss the case on the ground the ‘049 Patent is not directed to patent eligible subject matter and instead directed to an abstract idea excluded from protection under the U.S. patent regime. The district court affirmed LG’s motion to dismiss the complaint, determining the claims of the ‘049 Patent to be patent-ineligible under 35 U.S.C. § 101. Specifically, the district court found the claims of the ‘049 Patent are directed to an abstract idea of manipulating and combining data with no saving inventive concept under the two-step test for patent subject matter eligibility set in Alice Corp. v. CLS Bank International. Uniloc appealed. On Appeal the Federal Circuit reversed, holding that the claims of the ‘049 Patent are directed to a patent eligible idea and therefore they are valid.
The representative appealed claim 2 recites:
2. 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.
To provide context, the ‘049 Patent describes a wireless communication systems such as Bluetooth networks including a primary station (such as a personal computer) and one or more secondary stations (such as a mouse, keyboard, and other peripheral accessories). In such systems, the primary station maintains a ‘piconet’ network to communicate with the secondary stations. To do so, the primary station must first perform an ‘inquiry’ procedure to identify secondary stations wishing to be added to the piconet, after which a ‘page’ procedure adds the secondary stations to the piconet. Often battery-operated secondary stations may enter a ‘park’ mode to conserve power by ceasing active communications with the primary station, requiring the primary station to ‘poll’ the parked secondary station before information is transferred. Because the primary station must alternate between the inquiry/page process, which may take up to tens of seconds, and polling secondary stations for sharable data, under conventional systems it is possible for the secondary stations to experience significant latency in either joining the piconet or transmitting data after being parked. For example, it may take tens of seconds from the moment the mouse is moved to the time the effect is shown on the personal computer. The ‘049 Patent explains a technical solution to this technical problem by adding a field to the inquiry message, which can be used for polling in the inquiry process, thereby enabling the performance of both functions at the same time and reducing latency.
35 U.S.C. § 101 allows inventors to obtain patent on “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” However, this provision includes an implicit exception. The exception includes inventions directed toward abstract ideas, natural phenomena, and laws of nature. To assess whether the claim falls within the exception category of § 101, the Supreme Court formulated a two-prong test in its Alice decision. The first prong is often referred to as an “abstract idea” step and the second prong is often referred to as an “inventive concept” step. In the abstract idea step, it is determined whether the claim as a whole is directed to a patent-ineligible subject matter. If not, the claims are considered patent eligible under § 101. If, however, it is determined that the claims are directed to a patent-ineligible subject matter, then the claims are reviewed further under the “inventive concept” step to determine whether the additional claim elements alone or as proposed combination render the claim from abstractness to a patent eligible idea.
In applying step one of Alice, the Federal Circuit disagreed with the district court’s ruling, finding the contested claims “directed to a patent-eligible improvement to computer functionality, namely the reduction of latency experienced by parked secondary stations in communication systems.” Referencing Customedia v. DISH Network, the Federal Circuit noted that for software innovations to be patent eligible, the claimed improvements should not simply take an abstract business method from the pre-internet world and implement it on a computer and instead should be directed to the functionality of a computer or network platform itself. Illustrating such precedent, the Federal Circuit looked into the following cases:
- In Visual Memory LLC v. NVIDIA Corp., the Court held patent eligible claims directed to an improved memory system that configured operational characteristics of a computer’s cache memory based on the type of processor connected to the memory system, allowing ‘the claimed invention to accommodate different types of processors without compromising performance. This the Court held was an improvement in computer functionality and therefore patent eligible;
- In Finjan v. Blue Coat Systems,where claims directed to a behavior-based virus scan provided a greater computer security and were thus directed to a patent-eligible improvement in computer functionality;
- In DDR Holdings, LLC v. Hotels.com, L.P., for example, the Court held patent eligible claims directed to systems and methods for e-commerce outsourcing. The solution claimed in the patent was directed to the creation of a hybrid webpage that combined elements of both the host webpage visited by the user and the advertiser’s webpage, allowing visitors to stay on the original webpage while also being able to buy the advertised product. In holding the claims to be patent eligible, the Court emphasized that in “overcom[ing] a problem specifically arising in the realm of computer networks,” the claimed invention changed the normal operation of the computer network itself and was “necessarily rooted in computer technology; ”
- In Enfish, LLC v. Microsoft Corp., the Court held patent eligible claims directed to “a self-referential database that improved the way computers operated and handled data, allowing the more efficient launching and adaptation of databases;”
- In Ancora Technologies, Inc. v. HTC America, Inc., the Court held patent eligible claims directed to a non-abstract improvement to computer security. Here, the claims addressed the technical problem of vulnerability of license-authorization software to hacking and provided a technical solution to a computer-functionality problem. The technical solution was to store a “key” for authenticating the software license in the read-only memory (ROM) of the computer’s Basic Input Output System (BIOS) module and not in other memory of the computer. The patent explained that using BIOS memory, rather than other memory in the computer, improves computer security because successfully hacking BIOS memory (i.e., altering it without rendering the computer inoperable) is much harder than hacking the memory used by the prior art to store license-verification information;
- In Data Engine Technologies LLC v. Google, the Court held patent eligible claims directed to a specific method for navigating through three-dimensional electronic spreadsheets because the claimed invention improved computers’ functionality as a tool to instantly access all parts of complex three-dimensional electronic spreadsheets; and
- In Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc., the Court held patent eligible claims directed to an improved user interface that enabled users to more quickly access stored data and programs in small-screen electronics. Specifically, the Court held that the claims improved the functionally of the computer because they improved “the efficiency of using the electronic device by bringing together a limited list of common functions and commonly accessed stored data, which can be accessed directly from the main menu.”
In its analysis the Federal Circuit further clarified precedents referenced by the district court in its decision. In Digitech v. Electronic Imaging the claimed method of combining two data sets into a device profile “did not alone reduce image distortion or otherwise improve image processing,” therefore was not directed to a non-abstract improvement. Although the claimed invention profile could purportedly be used in reducing image distortion, the technical elements of how this is accomplished was not recited in the claims. Similarly, in Two-Way Media v. Comcast the claimed method of transmitting packets of information did not direct to the claimed improvements to load management and bottlenecking as the method itself did not describe the technical elements for making those improvements possible. Specifically, the claim recited “a method of transmitting packets of information over a communications network comprising: converting information into streams of digital packets; routing the streams to users; controlling the routing; and monitoring the reception of packets by the users.” Two-Way Media argued that the claimed invention was an improvement in load management and bottlenecking; however, the claimed method was not directed to those alleged improvements. Therefore, the Court held the claims are patent ineligible for being directed to series of abstract steps of converting, routing, controlling, monitoring, and accumulating records “using ‘result-based functional language’ without the means for achieving any purported.”
The Federal Circuit additionally responded to LG’s argument that the contested claims did not expressly mention the improvement to the system, ruling that “claims need not articulate the advantages of the claimed combinations to be eligible.” The key point here is that the claims need to recite the technical means for achieving the improvement to the functionality of computer; however, they do not need to recite result-based functional language.
Having found the contested claims directed to patent-eligible subject matter under step one of Alice, there was no need to entertain step two. The decision made explicit that the “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.”
Practice Notes:
When drafting an application, keep the following in mind:
- Do describe in the specification the technical problem associated with the prior art systems;
- Do describe in the specification the technical solution for overcoming the technical problem; specifically describe how the technical solution overcomes the technical problem;
- Do describe in the specification the technical effects/advantages provided by the technical solution; specifically describe concrete improvements to the functionality of computers or network platforms;
- Do recite in the claims technical elements/solutions by specifically describing how the invention improves the prior art systems. The key here is that the claims need to articulate the technical means for achieving the improvement to the functionality of computer;
- Do not recite result-based functional language without the means for achieving the purported improvements; and
- Do avoid generalizing the claimed improvements or including improvements not directly resulting from the claimed invention.