Patent claims directed to a communication system recite a technical solution and therefore, the Federal Circuit held, are not patent-ineligible under 35 U.S.C. § 101 and the two-part Mayo/Alice test. Uniloc USA, Inc. v. LG Electronics USA, Inc., No. 2019-1835 (Fed. Cir. April 30, 2020) (precedential) (opinion by Judge Moore, joined by Judges Reyna and Taranto). The court thus reversed Judge Koh in the Northern District of California, who had found that claims of U.S. Patent 6,993,049 were not patent-eligible, and had granted a Rule12(b)(6) motion to dismiss.
Representative claim 2 of the ’049 patent 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.
The district court held claims of the ’049 patent ineligible as “directed to the abstract idea of ‘additional polling in a wireless communication system,’” without a saving inventive concept, by analogizing to “data manipulation claims” found ineligible in Two-Way Media Ltd. v. Comcast Cable Communications, LLC (Fed. Cir. 2017), and Digitech Image Technologies, LLC v. Electronics for Imaging, Inc. (Fed. Cir. 2014).
The Federal Circuit’s analysis was over at Alice step one. Analogizing to DDR Holdings, LLC v. Hotels.com, L.P. (Fed. Cir. 2014) (generating hybrid web page to maintain look and feel of host website was patent-eligible), and Visual Memory LLC v. NVIDIA Corp. (Fed. Cir. 2017) (“accommodation of different types of processors without compromising performance” held patent-eligible), the court held that the ’049 patent claims “are directed to a patent-eligible improvement to computer functionality, namely the reduction of latency experienced by parked secondary stations in communication systems.” The court explained that
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.” In doing so, the claimed invention, like the improvement in computer memory we held patent eligible in Visual Memory, enables the communication system to accommodate additional devices, such as battery-operated secondary stations, without compromising performance.
(Internal citations omitted.)
LG had agreed that latency reductions were a patent-eligible technical improvement, but disputed that the claims were “sufficiently directed” to the improvement. LG said that the district court had it right: the claims merely recited “data manipulation” by observing “that conventional inquiry messages can accommodate conventional polling ‘using result-based functional language’ and generic Bluetooth components.”
The Federal Circuit disagreed. Two-Way Media and Digitech were distinguishable because the claims in those cases recited abstract data manipulation without improving a technological device. The present claims recited more than “generalized steps to be performed on a computer using conventional computer activity.” Specifically, the claims polling was directly tied to a technical improvement, reducing latency. And it did not matter that the claims themselves did not recite that latency was reduced.
Lessons for Practice
A legion of cases remind us over and over again of the importance of tying patent claims to a technical improvement to support § 101 eligibility. This case is another good example. The claims had a specific feature (polling) that the patent specific, even if not the claims themselves, tied to a specific technical improvement (reducing latency). Mentioning beneficial results (i.e., technical improvements) of claimed features in a patent specification is a very good idea.