In Uniloc USA, Inc. v. LG Electronics USA, Inc., [2019-1835] (April 20, 2020), the Federal Circuit reversed and remanded the district court’s 12(b)(6) dismissal of Uniloc’s patent infringement suit on the grounds that the claims of U.S. Patent No. 6,993,049 were directed to unpatentable subject matter.
Background: Piconet Technology
The ’049 patent is directed to a communication system comprising a primary station (e.g., a base station) and at least one secondary station (e.g., a computer mouse or keyboard). In conventional systems, such as bluetooth networks, two devices that share a common communication channel form ad hoc networks known as “piconets.” Joining a piconet requires the completion of two sets of procedures, namely an “inquiry” procedure and a “page” procedure. The inquiry procedure allows a primary station to identify secondary stations and it allows secondary stations to issue a request to join the piconet. The page procedure in turn allows a primary station to invite secondary stations to join the piconet. Together, it can take several tens of seconds to complete the inquiry and page procedures so that a device joins a piconet and is able to transfer user input to the primary station. Once a piconet is formed, the primary station “polls” secondary stations to determine whether they have data to share over the communication channel.
Because many secondary stations are battery-operated, secondary stations may enter a “park” mode and cease active communications with the primary station to conserve power. A secondary station in parked mode remains synchronized with the primary station, but it must be polled before it can leave park mode and actively communicate with the primary station. In conventional systems, primary stations alternate between sending inquiry messages to identify new secondary stations and polling secondary stations already connected to the piconet, including parked devices, to determine whether they have information to transmit. Therefore, under the conventional polling process, a secondary station could experience delays of tens of seconds both in initially joining a piconet and in transmitting data after entering park mode.
The Asserted Patent Claims
The district court held that the asserted claims are directed to the abstract idea of “additional polling in a wireless communication system,” analogizing the asserted claims to ineligible data manipulation claims in Two-Way Media Ltd. v. Comcast Cable Communications and Digitech Image Technologies, LLC v. Electronics for Imaging, Inc.
The Federal Circuit noted that In cases involving software innovations, this inquiry often turns on whether the claims focus on specific asserted improvements in computer capabilities or instead on a process or system that qualifies an abstract idea for which computers are invoked merely as a tool, and observed that it has routinely held software claims patent eligible under Alice step one when they are directed to improvements to the functionality of a computer or network platform itself. The Federal Circuit held that in accordance with its precedent such as DDR Holdings, Enfish, Visual Memory, Ancora Technologies, and Data Engine, 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 Federal Circuit said that the claimed invention therefore eliminates or reduces the delay present in conventional systems where the primary station alternates between polling and sending inquiry messages. Therefore, 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.”
The Federal Circuit rejected appellee’s argument that the claims weren’t sufficiently directed to the improvement, The Federal Circuit said that the claims at issue do not merely recite generalized steps to be performed on a computer using conventional computer activity. Instead, the Federal Circuit said, they are directed to “adding to each inquiry message prior to transmission an additional data field for polling at least one secondary station, and this change in the manner of transmitting data results in reduced response time by peripheral devices which are part of the claimed system.
Federal Circuit Ruling
The Federal Circuit said that 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. The Federal Circuit said that to hold otherwise risks resurrecting a bright-line machine-or-transformation test, or creating a categorical ban on software patents.