Done at Step 1: When a Claim Is Tied to an Improvement, No Need to Proceed to Alice Step 2

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By reversing the lower court’s ruling that the asserted claims were not patent-eligible under 35 U.S.C. §  101 in Uniloc v. LG Electronics, the Federal Circuit resurrected Uniloc’s infringement suit against LG Electronics. It also demonstrated what we already know — courts have been inconsistent in their application of the Alice/Mayo test. Nevertheless, this latest opinion provides us with another good example of claim language that the Federal Circuit considers to be non-abstract such that it passes Step 1 of the Alice/Mayo test.

The technology at issue in Uniloc’s U.S. Patent No. 6,993,049 relates to Bluetooth-enabled and other networks involving a primary station and at least one secondary station (e.g., a mouse or a keyboard) that form ad hoc networks with one another. Conventional communication systems alternate between sending inquiry messages to identify/invite new secondary stations to join a piconet and polling secondary stations already connected to the piconet (including “parked” secondary stations) to determine whether they have data to share. According to the specification of the ʼ049 patent, the invention advantageously allows for simultaneous inquiry and polling, thus providing a rapid response time even without an active communication link.

After being sued by Uniloc for infringement of that technology in the Northern District of California, LG moved to dismiss the complaint on the basis that the asserted claims are directed to ineligible subject matter under 35 U.S.C. §  101. The district court granted LG’s motion. In doing so, the claims of the ʼ049 patent, of which claim 2 was deemed representative, were analogized to “abstract data manipulation claims” held by the Federal Circuit in previous decisions to be ineligible. The lower court also found that the asserted claims could not be saved under Step 2 of Alice/Mayo because they failed to recite an inventive concept.  Uniloc appealed.

The Federal Circuit’s analysis started with the explanation that Step 1 of Alice/Mayo “often turns on whether the claims [at issue] focus on specific asserted improvements in computer capabilities or . . . an abstract idea for which computers are invoked merely as a tool.”  Turning specifically to claim 2 of the ʼ049 patent, the court found that the reduction of latency experienced by parked secondary stations in communication systems is indeed an improvement to computer functionality. In fact, likening claim 2 of the ʼ049 patent to the claims in DDR Holdings, LLC v., L.P., the court explained that “the claimed invention changes the normal operation of the communication system itself to ‘overcome a problem specifically arising in the realm of computer networks.’”

While LG did not dispute that there was an improvement to computer functionality, it argued that, because the claims use “result-based functional language,” there is not a specific focus on the improvement in the claims. The Federal Circuit disagreed and explained that the lower court’s and LG’s reliance on prior cases where the claims failed to concretely capture any improvement in computer functionality was misplaced. For example, in Two-Way Media, the claims were held to be ineligible because they merely recited a series of abstract steps (“converting,” “routing,” “controlling,” “monitoring,” and “accumulating records”) but, according to the Federal Circuit, did not sufficiently describe how to achieve any purported technological improvement. In contrast, the required “adding to each inquiry message prior to transmission an additional data field for polling at least one secondary station” in the claims of the ʼ049 patent was considered to represent a change in the manner of transmitting data that results in reduced response time by peripheral devices.

In short, the claims of the ʼ049 patent recite more than “generalized steps to be performed on a computer using conventional computer activity.” Specifically, the polling required by the claims was directly tied to a technical improvement — reducing latency — even when the claims themselves did not expressly articulate that improvement. Step 1 and done; Step 2 of Alice/Mayo need not be carried out. Now that the claims of the ʼ049 patent survived the § 101 eligibility challenge, LG will need to refocus its defense against Uniloc’s infringement claim. And, this Federal Circuit decision helps to remind drafters to further § 101 eligibility by (1) tying software claims to a technical improvement and (2) detailing the advantages/improvements in the specification.