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Uniloc USA, Inc. v. LG Electronics USA, Inc.

6/15/2020

In Uniloc USA, Inc. v. LG Electronics USA, Inc., the Federal Circuit held that certain claims of U.S. Patent No. 6,993,049 (the “’049 Patent”) are patent eligible under 35 U.S.C. § 101 because the claims “are directed to a patent-eligible improvement to computer functionality, namely the reduction of latency experienced by parked secondary stations in communication systems.”  See Uniloc USA, Inc. v. LG Electronics USA, Inc. Case No. 2019-1835 (Fed. Cir. April 30, 2020) at page 7.

The Federal Circuit noted that the ’049 Patent is directed to a communication system including a primary station (e.g., a base station) and a secondary station (e.g., a peripheral device) of a piconet (i.e., an ad hoc Bluetooth network).  See Id. at page 2.

Regarding conventional systems, the Federal Circuit noted that the ’049 Patent mentions that “primary stations alternate between sending inquiry messages to identify new secondary stations and polling secondary stations already connected to the piconet, including parked devices, to determine whether they have information to transmit.”  See Id. at page 3.

Regarding an underlying technical problem of the conventional systems, the Federal Circuit noted that the ’049 Patent mentions that “a secondary station could experience delays of tens of seconds both in initially joining a piconet and in transmitting data after entering park mode.”  See Id.

Regarding a purported technical improvement to address the foregoing technical problem, the Federal Circuit noted that the ’049 Patent mentions a technique of “including a data field for polling as part of the inquiry message, thereby allowing primary stations to send inquiry messages and conduct polling simultaneously.”  See Id.

Referring to FIG. 5 of the ’049 Patent shown below, the ’049 Patent mentions that a primary station may transmit a Bluetooth inquiry packet including a standard inquiry message field 502 and an extra data field 504 including polling information.  See ’049 Patent at col. 4, line 59 – col. 5, line 27.

FIG. 5 of the ’049 Patent

Referring to representative claim 2 of the ’049 Patent shown below, the Federal Circuit noted that claim 2 recites a primary station for use in a communication system “wherein means are provided for . . . adding to each inquiry message prior to transmission an additional data field for polling at least one secondary station.”  See Uniloc USA, Inc. v. LG Electronics USA, Inc. at page 7.

 

Claim 2 of the ’049 Patent

The Federal Circuit noted that “[t]he additional data field enables a primary station to simultaneously send inquiry messages and poll parked secondary stations [and that t]he claimed invention therefore eliminates or reduces the delay present in conventional systems where the primary station alternates between polling and sending inquiry messages.”  See Id.  

Further, the Federal Circuit noted that “[t]he claimed invention therefore eliminates or reduces the delay present in conventional systems where the primary station alternates between polling and sending inquiry messages.”  See Id.

LG argued that the claims of the ’049 Patent were analogous to abstract data manipulation claims previously held ineligible by the Court, and that the claims were not sufficiently directed to the purported technical improvement mentioned above because the claims recited “result-based functional language” and generic Bluetooth components.   See Id. at page 8.

In response, the Federal Circuit noted that “[t]o the extent LG argues that the claims themselves must expressly mention the reduced latency achieved by the claimed system, LG is in error [because c]laims need not articulate the advantages of the claimed combinations to be eligible.”  See Id. at pages 9-10. 

Further, the Federal Circuit concluded “that the claims at issue are not directed to the abstract idea of performing additional polling in wireless communication systems or performing additional polling using inquiry messages[, and instead] are directed to a specific asserted improvement to the functionality of the communication system itself.”  See Id. at page 10.

Further still, the Federal Circuit noted that “[t]he claimed invention’s compatibility with conventional communication systems does not render it abstract[, nor] does the fact that the improvement is not defined by reference to ‘physical’ components.”  See Id.

In conclusion, the Federal Circuit noted that “[t]he claims of the ’049 patent recite a specific improvement in the functionality of the communication system itself, namely the reduction of latency experienced by parked secondary stations. This is sufficient to pass muster under Alice step one.” See Id.

From a patent drafting perspective, Uniloc emphasizes the importance of clearly articulating a technical problem associated with a conventional system, and clearly articulating how the disclosure provides a technical improvement that addresses the technical problem.  During prosecution, the articulations can provide the basis for arguments in favor of eligibility of the claims.

Further, the Federal Circuit noted that “[t]he claimed invention therefore eliminates or reduces the delay present in conventional systems where the primary station alternates between polling and sending inquiry messages.”  See Id.

LG argued that the claims of the ’049 Patent were analogous to abstract data manipulation claims previously held ineligible by the Court, and that the claims were not sufficiently directed to the purported technical improvement mentioned above because the claims recited “result-based functional language” and generic Bluetooth components.   See Id. at page 8.

In response, the Federal Circuit noted that “[t]o the extent LG argues that the claims themselves must expressly mention the reduced latency achieved by the claimed system, LG is in error [because c]laims need not articulate the advantages of the claimed combinations to be eligible.”  See Id. at pages 9-10. 

Further, the Federal Circuit concluded “that the claims at issue are not directed to the abstract idea of performing additional polling in wireless communication systems or performing additional polling using inquiry messages[, and instead] are directed to a specific asserted improvement to the functionality of the communication system itself.”  See Id. at page 10.

Further still, the Federal Circuit noted that “[t]he claimed invention’s compatibility with conventional communication systems does not render it abstract[, nor] does the fact that the improvement is not defined by reference to ‘physical’ components.”  See Id.

In conclusion, the Federal Circuit noted that “[t]he claims of the ’049 patent recite a specific improvement in the functionality of the communication system itself, namely the reduction of latency experienced by parked secondary stations. This is sufficient to pass muster under Alice step one.” See Id.

From a patent drafting perspective, Uniloc emphasizes the importance of clearly articulating a technical problem associated with a conventional system, and clearly articulating how the disclosure provides a technical improvement that addresses the technical problem.  During prosecution, the articulations can provide the basis for arguments in favor of eligibility of the claims.