In Uniloc USA Inc. v. LG Electronics USA Inc. the district court found claims directed to “primary station for use in a communications system” in U.S. Patent 6,993,049 (“the ‘049 patent”) to be invalid under 35 U.S.C. § 101 for not claiming patentable subject matter. The invalidly determination for the ‘049 patent was arrived at by the court after analysis under the Alice framework, the court ultimately determining that the claims were directed to an abstract idea.
Claim 2, selected by the court as representative, 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.
In layman’s terms, the invention was directed to an improvement in Bluetooth technology. Specifically, the improvement and point of novelty in the claim was “adding to each inquiry message prior to transmission an additional data field for polling.”
Under step one of the Alice framework the court found that the patent was directed to an abstract idea. To arrive at the conclusion, the court examined a series of various factors considered under step one of Alice.
The court found that claim 2 was direct to generic hardware that executed routine software functions. The court cited RecogniCorp, LLC v. Nintendo Co., Ltd., 855 F.3d 1322 (Fed. Cir. 2017), BSG Tech LLC v. Buyseasons, Inc., 899 F.3d 1281 (Fed. Cir. 2018), In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607 (Fed. Cir. 2016), and Digitech Image Techs., LLC v. Elecs. For Imaging, Inc., 785 F.3d 1344 (Fed. Cir. 2014) as examples of generic hardware and software with routine functions that have previously been held as abstract ideas. Based on the patent specification and admissions made by Unilock, the court found that the “primary station” and the “secondary station” were merely generic Bluetooth enameled hardware that generically transmitted and received data.
The court additionally found that claim 2 was directed to information itself, which has been found in numerous cases to be intangible. The court discussed numerous cases to support this concept, including Intellectual Ventures II LLC v. JP Morgan Chase & Co., 2015 WL 194133 (S.D.N.Y. Apr. 28, 2015)(other 101 rejections for Intellectual Ventures’ patents are discussed here, here, and here) , Two-Way Media Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1337 (Fed. Cir. 2017), Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016), and 3G Licensing, S.A. v. Blackberry Ltd., 302 F. Supp. 3d 640 (D. Del. 2018). Specially, the court found that “adding to each inquiry message prior to transmission an additional data field for polling at least one secondary station” of representative claim 2 was abstract because it was analogous to abstract data manipulation of other cases.
Finally, the court found that there were long standing practices analogous to the claimed invention. The court discussed Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314 (Fed. Cir. 2016), and Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343 (Fed. Cir. 2014) as examples of cases where long standing “brick-and-mortar” context provided the necessary background to determine a claim was merely directed to an abstract idea. The court analogized the benefit of “waking up” the Bluetooth in response to the additional polling data of the claim to waking up in response to a user input. This analogy was bolstered by the specification of the ‘049 patent, which discussed the invention as solving a problem of needed a human input to trigger the “wake up” process.
Under step two of the Alice framework, the court initially identified that the elements of claim 2 were not inventive individually. Specially, the stations and broadcasting inquiry messages were known. Accordingly, the court focused on whether “adding an additional polling field” was a sufficient inventive concept to render the claim patent eligible. The court looked to BSG Tech and Two-Way Media, this time for guidance as to what is sufficient to provide an inventive concept. Notably, the court looked to the claim itself to determine that the combination did not provide an inventive concept. Specifically, the court reasoned that “an additional data field” was already included in “a plurality of predetermined data fields,” e.g., adding one more data field to a group of multiple data fields was not inventive.
Ultimately, based on the above described analysis, the court found the claims of the ‘049 patent to be invalid under section 101.
It may be worth nothing however, that the court specifically pointed that claim 2 “lacks detail as to any of the rules or parameters that govern the additional polling.” Could having additional limitations directed toward more specific details surrounding how, why, or what was added in the additional data fields saved the ‘049 patent?