Focusing on Functionality, Software Claims Found Patent Eligible
The US Court of Appeals for the Federal Circuit found that patent claims directed to a communication system were patent eligible under 35 U.S.C. § 101 because the claimed invention changes the normal operation of a communication system to overcome a problem specifically arising in the realm of computer networks. Uniloc USA, Inc. v. LG Electronics USA, Inc., Case No. 19-1835 (Fed. Cir. Apr. 30, 2020) (Moore, J.).
Uniloc owns a patent directed to a communication system comprising a primary station, such as a computer, and at least one secondary station, such as a wireless computer mouse or keyboard. In conventional systems, the primary stations would alternate between sending (1) inquiry messages to identify new secondary stations and (2) polling messages to determine whether inactive, but previously connected, secondary stations have information to transit. In conventional systems, the secondary stations could experience long delays in connecting to the primary station and sending data. The claims at issue improved these conventional communication systems by including a data field for polling in the inquiry message. This improvement enabled a rapid response time between secondary stations and primary stations.
Uniloc filed a complaint against LG asserting infringement of the patent. LG moved to dismiss, arguing that the claims were ineligible under 35 U.S.C. § 101. The district court agreed with LG, finding the asserted claims are directed to the abstract idea of “additional polling in a wireless communication system,” analogizing the asserted claims to data manipulation claims held ineligible by the Federal Circuit in Two-Way Media v. Comcast Cable Communications (IP Update, Vol. 20, No. 12) and Digitech Image Technologies v. Electronics for Imaging (IP Update, Vol. 17, No. 8). The district court also concluded that the claims failed to recite an inventive concept sufficient to save the claims. Uniloc appealed.
Applying the Supreme Court’s two-step Alice/Mayo framework for patent subject matter eligibility, the Federal Circuit’s analysis focused on whether the claims were directed to an abstract idea. The Court noted that cases involving software innovations often turn “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.” It further noted that the Court has routinely held software claims were eligible if the claims were “directed to improvements to the functionality of a computer or network platform itself.”
Applying these principles, the Federal Circuit found that Uniloc’s patent claims were eligible because they were directed to an improvement of computer functionality. More specifically, the Court noted that enabling the primary station to simultaneously send inquiry messages and poll secondary stations reduced delays that were present in conventional systems. Therefore, the claims were not merely combining or manipulating data, but instead were “directed to a specific asserted improvement to the functionality of the communication system itself.” Accordingly, the Federal Circuit found that the claims were patent eligible under § 101.
Law Clerk Gilbert Smolenski contributed to this article.