The District of Delaware recently denied a motion to dismiss based on lack of patent-eligible subject matter, under 35 U.S.C. § 101 and the Alice/Mayo test, in claims of U.S. Patent No. 7,333,806 directed to two-way radio communications utilizing either a computer network or the Internet. RICPI Communications LLC, v. JPS Interoperability Solutions, Inc., No. 18-1507-RGA (D. Del. Mar. 18, 2019). The ‘806 patent was eligible because “the computer network or internet connection serve[d] as one claim element of a concrete system for two-way radio communication.” Additionally, “‘the particular arrangement of elements recited in the ‘806 patent improves the manner in which two-way radios may establish communication by allowing them to do so over a computer network.”
Claim 1 is representative and is reproduced here:
- A system for two-way radio communication comprising:
(a) a first two-way radio comprising:
(i) a means for selecting and transmitting a signal code to a shared, public base/repeater station; and
(ii) a means for sending two-way radio communication signals to said shared, public base/repeater station;
(iii) a means for receiving two-way radio communication signals from said shared, public base/repeater station;
(b) said shared, public base/repeater station comprising:
(i) a base/repeater station decoder at said shared, public base/repeater station for decoding the signal code from said first two-way radio into a signal that is recognized by a base/repeater station controller located at said shared, public base/repeater station and transferring said signal to said base/repeater station controller via a dedicated connection; and
(ii) wherein said base/repeater station controller comprises a means for receiving said decoded signal from said base/repeater station decoder and correlating said decoded signal to one or more internet addresses associated with at least one target base station by which there is established a bi-directional computer network link with said at least one target base station using said internet address for the exchange of two-way radio communication signals;
(iii) wherein said shared, public base/repeater station further comprises a means for sending and receiving two-way radio communication signals to and from said two-way radio; and
(c) wherein said at least one said target base station comprises:
(i) a target station controller located at said target base station comprising a means for establishing a bi-directional computer network link with said shared, public base/repeater station for two-way radio communication signals;
(ii) wherein said at least one target base station further comprises a means for sending and receiving two-way radio communication signals to and from a second two-way radio; and
(d) at least one second two-way radio comprising:
(i) a means for receiving two-way radio communication signals from said at least one target base station; and
(ii) a means for sending two-way radio communication signals to said at least one target base station; and
(e) whereby two-way radio communication signals are bi-directionally exchanged directly between said first two-way radio and said second two-way radio via said bi-directional computer network link directly between said shared, public base/repeater station controller and said target station controller.
The court applied the two-step Alice framework to the defendant’s Rule 12(b)(6) motion to dismiss. The court found that representative claim 1 was “not directed to an abstract idea” because, as argued by RICIP Communications, claim 1 “provides specific structure for a system that allows two-way communication between devices in a manner that did not exist at the time of the invention and is directed to improvements in computer-related technology.” The defendant argued that the representative claim was “directed to the end result of communication over the internet or a computer network” because claim 1 uses functional language, similar to the patent in BuySafe, Inc. v. Google, Inc., 765 F.3d 1350 (Fed. Cir. 2014). However, the court noted that the claims in BuySafe “neither ‘require[d] specific programming’ now were they ‘tied to any particular machine.’” In the present case, the court found that the claims of the ‘806 patent “are tied to particular machines: a first two way radio, a shared, public base/repeater station, at least one target base station, and a second two-way radio.”
Additionally,the defendant argued “that the ‘806 patent ‘risks preempting all methods or systems for establishing two-way communication over the Internet in order to send and receive data,’” similar to Loyalty Conversion Sys. Corp. v. American Airlines, Inc., 66 F. Supp. 3d 829 (E.D. Tex. 2014). However, the court noted that Loyalty Conversion did not control because “the claims merely claimed the abstract idea of the conversion of loyalty rewards points to a generic computerized system.” In the present case, the ‘806 patent “is limited to a specific arrangement of structures in both system and method claims.” Therefore, the court found that the ‘806 patent was patent eligible because the claim was not directed to an abstract idea.
The court went on to analyze the ‘806 patent claims under step two of Alice. The court noted that “the ‘806 patent improves the manner in which two-way radios may establish communication” because the “use of a computer network instead of telephone lines…both enables long distance communication and makes the communication more accessible because it reduces cost of the communication.” Further, the court, citing Alice Corp. Pty. v. CLS Bank Int ‘l, 573 U.S. 208, 216 (2014), noted that the “particular arrangement claimed ‘effect[s] an improvement in…[the] technical field’ of radio communication.” Therefore, the court found the ‘806 patent satisfied the Alice framework and was patent eligible subject matter.
Lessons for Practice
Including structure in the claims and specification of software applications can be helpful in establishing patent eligible subject matter. However, as set forth in Secure Cam v. Tend Insights, the mere inclusion of physical structure will not satisfy patent eligibility requirements. Yet, as this case illustrates, an unconventional arrangement of conventional claim elements can “impart an inventive concept” to establish patent eligibility under § 101.