Update on Patent-Eligible Subject Matter

Recently, the Court of Appeals for the Federal Circuit (“the Court”) issued opinions in two appeals involving UNILOC.  The two decisions focused on patent-eligible subject matter as interpreted under 35 U.S.C. 101.  In the first decision, the Court found the claims to recite patent-eligible subject matter.  In the second, the claims were found to be directed to an abstract idea.

In Uniloc USA et al. v. LG Electronics USA, Inc., the patentee appealed a decision from the N.D. California (“the District Court”) that the claims were directed to an abstract idea after a Rule 12(b)(6) motion by the defendants.  The District Court determined that the claims were directed to the abstract idea of additional polling in a wireless communication system and compared the claims directed to data manipulation held to be ineligible in previous decisions.

Claim 2 is representative of the claims at issue.  Claim 2 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 communication protocol, and

for adding to each inquiry message prior to transmission, an additional field for polling at least one secondary station.

The invention relates to use of a primary stations to send “pings” to various secondary stations for determining a status of the secondary station or add them to the transmission group.  These pings would alternate between inquiry messages to identify new secondary stations and polling secondary stations already connected to the primary station.  Secondary stations may enter a “park” mode and cease active communications with the primary station to conserve power.  A secondary station in parked mode remain synchronized with the primary station but it must be polled before it can leave the park mode and actively communicate with the primary station.  Conventional systems alternate between inquiry messages and polling messages.  The claims combine these functions so that both actions may be done simultaneously.

The Court applied the Alice test to determine if claim 2 recited patent-eligible subject matter.  First, one determines whether the claims are directed to a patent-ineligible concept, such as an abstract idea.  If so, then the inquiry considers the elements of each claim both individually and as an ordered combination to determine whether the additional elements transform the nature of the claim into a patent-eligible application.  For software innovations, the first step often turns on whether the claims focus on specific asserted improvements in computer capabilities or, instead, on a process or system that qualifies as an abstract idea for which computers are invoked merely at tools.  The Court summarized previous decisions that held claims are eligible when they are directed to improvements to the functionality of a computer or network platform itself.

The claims are not directed to an abstract idea because the patent-eligible improvement to computer functionality is the reduction of latency experienced by parked secondary stations in communications systems.  The additional data field added in the claim allows both types of messages to be sent at the same time.  This feature eliminates or reduces the delay present in conventional systems where the messages are alternated.

The defendant argued that the claims are not sufficiently directed to the improvement and only recite that conventional messages can accommodate the polling message using “result-based functional language.”  The Court disagreed and distinguished this case from others that recite generic steps using result-based functional language without the means for achieving any purported technological improvement.  Claim 2 recites that the adding step provides a change in the manner of transmitting data using the transmission data itself.  The specification outlined the times and problems using the two message process in the prior art.  The “adding” limitation provides a solution to this problem.  The claim does not need to expressly mention reducing latency or the advantages of the claimed combination.

As the claims are not directed to an abstract idea, the Court did not analyze the claims under the second part of the Alice test.

In Cisco Systems, Inc. v. Uniloc 2017, LLC, the Court came to a different outcome regarding claims held by the District Court as patent-ineligible under 35 U.S.C. 101.  Claim 6 is representative and recites

A method for operating an ad-hoc radio communication system having a plurality of stations formed into at least one network, the method comprising the steps of:

determining a master/slave rank of each station in the network representative of the station’s suitability for acting as master in the network using antenna performance characteristics of each station in view of the antenna’s local environment; and enabling a station with the highest rank to be master.

Under step one of the Alice test, the Court held that the claims were directed to the abstract idea of ranking stations based on characteristics.  There were no specific asserted improvements, unlike the decision above.  Previous holdings that were not directed to abstract ideas described specific techniques, specific methods, or specific configurations that provided an improvement in the technology.  The patentee did not provide these aspects in their specification.  For example, the claim does not specify any particular metric or method for ranking the stations.  Under step two, the additional claimed features were well-understood, routine, and conventional as they relate to forming an ad-hoc network.

Differences between claim 2 in the first decision and claim 6 is the second one include that the patent-eligible one recites an action taken prior to sending the message, i.e., adding the additional field for polling.  This limitation provides the basis for reducing latency within the system.  Claim 6 does not recite such a feature.  Further, ranking stations based on generic performance characteristics without any analysis or additional limitations as to how this is done.  Thus, claim drafting to avoid abstract idea problems should include recitation to the solution to a problem that is further supported by the specification.

-written by Bill Nixon

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