Updated: Jul 27, 2020
Uniloc USA, Inc., Uniloc Luxembourg S.A., Uniloc 2017 LLC
LG Electronics USA, Inc., LG Electronics Mobilecomm U.S.A, Inc.,
LG Electronics, Inc.
April 30, 2020
When computer-related patent claims are challenged as being abstract—and therefore patent-ineligible under 35 USC §101—the Federal Circuit’s analysis often turns on whether those claims: (a) are directed to an improvement in a “computer’s functionality” (and are therefore usually found patent-eligible); or (b) simply recite abstract steps “without the means for achieving any purported technological improvement” (and are therefore ineligible). But assuming that an invention does result in an improvement in a computer’s functionality, must claims directed to that invention explicitly recite those improvements to be patent-eligible? In Uniloc v. LG Electronics, the Federal Circuit held that they do not.
Uniloc owns US Patent 6,993,049, which is directed to solving a problem specific to Bluetooth networks (called “piconets”). These networks typically include a “master” or “primary” station that controls communications over the network, and one or more “slave” or “secondary” stations. To save battery power, inactive slave/secondary stations will enter a “park” mode; before a parked secondary station may transmit data again, it must receive a “polling” message from the
A primary station in a Bluetooth piconet is also tasked with finding other secondary stations that wish to join the piconet; the primary station does this by occasionally transmitting a sequence of “inquiry” messages; secondary stations that wish to join that particular piconet will then respond to one of those messages.
The ‘049 patent recognized a problem with this process: sending out the required sequence of inquiry messages takes many seconds; and during this time, the primary station is unable to transmit polling messages. The result is that if a parked secondary station wishes to transmit data while the primary station is sending out inquiry messages, that parked station may have to wait a relatively long time before it is able to transmit data (which, again, it may only do after it receives a polling message from the primary station).
The ‘049 patent solves this latency problem by causing the primary stations to add a polling message to each inquiry message that it broadcasts. Therefore, if a parked secondary station needs to transmit data while the primary station is transmitting a sequence of inquiry messages, the parked station will have to wait (at most) a fraction of a second before receiving a needed polling message.
After Uniloc sued LG for allegedly infringing the ‘049 patent, the defendant filed a 12(b)(6) motion arguing that this patent’s claims—which essentially state that a primary station appends a polling message to each inquiry message—are patent-ineligible under §101. The district court agreed, holding that the challenged claims are directed to the abstract idea of “additional polling in a wireless communication system,” and analogizing the claims to data manipulation claims that the Federal Circuit had held ineligible in its 2014 Digitech Image Technologies 2017 Two-Way Media decisions.
On appeal, defendant LG conceded that reducing latency experienced by parked secondary stations in a conventional Bluetooth piconet is a patent-eligible improvement to computer functionality. But according to LG, the claims are not patent-eligible because they mention nothing about reduced latency—and are therefore not “sufficiently directed” to this improvement.
The Federal Circuit disagreed, explaining that the claims “need not articulate the advantages of the claimed combinations to be eligible.” The claims at issue here do not explicitly state that appending a polling message to each inquiry message reduces latency for parked secondary stations. But the result of the claimed invention is this reduced latency; and it is this result—which is a specific improvement to the functionality of a communication system itself—that renders the claims patent-eligible.