Uniloc, owner of U.S. Patent No. 6,993,049, brought an action for infringement of that patent against LG in the Northern District of California.  The District Court granted LG's motion to dismiss on the pleadings, agreeing with LG that the claims were directed to patent-ineligible subject matter under 35 U.S.C. § 101.  Uniloc appealed.

The patented technology relates to Bluetooth-enabled and similar networks.  These networks involve a primary station and at least one secondary station that form ad hoc networks (piconets) with one another.  Joining such a network involves an inquiry procedure, in which primary stations identify secondary stations and the secondary stations can request to join the piconet, and a page procedure, in which a primary station can invite the secondary stations to join the piconet.  According to the patent, "it can take several tens of seconds to complete the inquiry and page procedures so that a device joins a piconet and is able to transfer user input to the primary station."

Further, secondary stations can be battery operated, and may enter a low-power "park" mode by stopping active communication with the primary station.  A parked station must be polled in order to restore its ability to communicate with the primary station.  This polling process may also take several tens of seconds.

The patent explains that this delay can be reduced by adding a data field for polling as part of the inquiry message.  This allows inquiries and polls to occur simultaneously for a parked station, thereby reducing the polling delays.

At issue was claim 2 of the patent, which 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.

In Alice Corp. v. CLS Bank Int'l, the Supreme Court set forth a two-part test to determine whether claims are directed to patent-eligible subject matter under § 101.  One must first decide whether the claim at hand involves a judicially-excluded law of nature, a natural phenomenon, or an abstract idea.  If so, then one must further decide whether any element or combination of elements in the claim is sufficient to ensure that the claim amounts to significantly more than the judicial exclusion.  But elements or combinations of elements that are well-understood, routine, and conventional will not lift the claim over the § 101 hurdle.  While this inquiry is generally carried out as a matter of law, factual issues can come into play when determining whether something is well-understood, routine, and conventional.

Notably, the proper application of this test has been inconsistent defined and is confusing in practice.  A potentially more workable definition is that a claim is directed to an abstract idea if all of its elements are either non-specific, address a non-technical problem, or known in the art.  Thus, in order for a claim to be successful under § 101, it should have three qualities:  specificity, a technical problem that it solves, and some degree of novelty.

In any event, the District Court found claim 2 ineligible because of its allegedly being "directed to the abstract idea of additional polling in a wireless communication system."  The District Court found the claim to be analogous to those that failed the § 101 test in Two-Way Media Ltd. v. Comcast Cable Communications and Digitech Image Technologies, LLC v. Electronics for Imaging, Inc.

The Federal Circuit began its analysis by observing that the § 101 inquiry "often turns on whether the claims focus on specific asserted improvements in computer capabilities or . . . an abstract idea for which computers are invoked merely as a tool."  The Court went on to reiterate a point that it has made in a number of previous cases, that software claims can be eligible when "they are directed to improvements to the functionality of a computer or network platform itself."

Here, the Court rapidly concluded that this was the case for claim 2, as the claimed invention involves "the reduction of latency experienced by parked secondary stations in communication systems."  Notably, the additional data field facilitates this improvement and changes the normal operation of the communication itself "to overcome a problem specifically arising in the realm of computer networks."

LG did not dispute that the invention provided this improvement.  Instead, it contended that the claims did not focus specifically enough on the improvement, and instead used "result-based functional language."  LG also relied on the aforementioned Two-Way Media and Digitech cases.

The Federal Circuit disagreed.  It explained that the claims in Two-Way Media and Digitech were found lacking because the claim language did not include the purported technical advances described in their respective specifications.  In contrast, the Court found that claim 2 changed "the manner of transmitting data [to result] in reduced response time by peripheral devices which are part of the claimed system."

The Court also stated that:

To the extent LG argues that the claims themselves must expressly mention the reduced latency achieved by the claimed system, LG is in error.  Claims need not articulate the advantages of the claimed combinations to be eligible.

Further, the Court also made some general statements about software patent eligibility:

The 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.  . . .  Our precedent is clear that software can make patent-eligible improvements to computer technology, and related claims are eligible as long as they are directed to non-abstract improvements to the functionality of a computer or network platform itself.

For these reasons, the Federal Circuit ruled that claim 2 met the requirements of § 101 and passed the first part of the Alice test.  Therefore, the second part of the test need not be carried out.

Uniloc USA, Inc. v. LG Electronics USA, Inc. (Fed. Cir. 2020)
Panel: Circuit Judges Moore, Reyna, and Taranto
Opinion by Circuit Judge Moore