Uniloc USA, Inc. v. Lg Electronics USA, Inc.

957 F.3d 1303

• Court: Court of Appeals for the Federal Circuit
• Decided: April 30, 2020
• Docket: 19-1835
• Status: Published

Opinion

Case: 19-1835 Document: 35 Page: 1 Filed: 04/30/2020

United States Court of Appeals for the Federal Circuit ______________________

UNILOC USA, INC., UNILOC LUXEMBOURG S.A., UNILOC 2017 LLC, Plaintiffs-Appellants

v.

LG ELECTRONICS USA, INC., LG ELECTRONICS MOBILECOMM U.S.A., INC., LG ELECTRONICS, INC., Defendants-Appellees ______________________

2019-1835 ______________________

Appeal from the United States District Court for the Northern District of California in No. 5:18-cv-06738-LHK, Judge Lucy H. Koh. ______________________

Decided: April 30, 2020 ______________________

JAMES J. FOSTER, Prince Lobel Tye LLP, Boston, MA, argued for plaintiffs-appellants.

J. MICHAEL JAKES, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Washington, DC, argued for de- fendants-appellees. Also represented by JOSEPH PRESTON LONG. ______________________ Case: 19-1835 Document: 35 Page: 2 Filed: 04/30/2020

Before MOORE, REYNA, and TARANTO, Circuit Judges. MOORE, Circuit Judge. Uniloc USA, Inc., Uniloc Luxembourg S.A. and Uniloc 2017 LLC (collectively, Uniloc) sued LG Electronics USA, Inc., LG Electronics MobileComm U.S.A., Inc. and LG Elec- tronics, Inc. (collectively, LG) in the United States District Court for the Northern District of California, alleging in- fringement of claims of U.S. Patent No. 6,993,049. LG moved to dismiss Uniloc’s Second Amended Complaint un- der Fed. R. Civ. P. 12(b)(6), arguing the claims of the ’049 patent are ineligible under 35 U.S.C. § 101. The district court granted LG’s motion, determining that the asserted claims are directed to an abstract idea and do not recite an inventive concept. Uniloc USA Inc. v. LG Elecs. USA Inc., 379 F. Supp. 3d 974, 1000 (N.D. Cal. 2019). Because we hold the claims are not directed to ineligible subject matter under § 101, we reverse and remand. BACKGROUND The ’049 patent is directed to a communication system comprising a primary station (e.g., a base station) and at least one secondary station (e.g., a computer mouse or key- board). ’049 patent at Abstract; id. at 1:28–31, 3:31–34. In conventional systems, such as Bluetooth networks, 1 two devices that share a common communication channel form ad hoc networks known as “piconets.” Id. at 1:19–21. Join- ing a piconet requires the completion of two sets of proce- dures, namely an “inquiry” procedure and a “page” procedure. Id. at 1:54–55. The inquiry procedure allows a primary station to identify secondary stations and it allows secondary stations to issue a request to join the piconet. Id.

1 Although the claimed invention is described with particular reference to a Bluetooth system, it is also appli- cable to other communication systems. ’049 patent at 1:6– 8. Case: 19-1835 Document: 35 Page: 3 Filed: 04/30/2020

UNILOC USA, INC. v. LG ELECTRONICS USA, INC. 3

at 1:56–57. The page procedure in turn allows a primary station to invite secondary stations to join the piconet. Id. at 1:57–58. Together, 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 pri- mary station. Id. at 1:58–61. Once a piconet is formed, the primary station “polls” secondary stations to determine whether they have data to share over the communication channel. Because many secondary stations are battery-oper- ated, secondary stations may enter a “park” mode and cease active communications with the primary station to conserve power. Id. at 1:43–45, 1:62–66. A secondary sta- tion in parked mode remains synchronized with the pri- mary station, but it must be polled before it can leave park mode and actively communicate with the primary station. Id. at 1:43–51. In conventional systems, primary stations alternate between sending inquiry messages to identify new secondary stations and polling secondary stations al- ready connected to the piconet, including parked devices, to determine whether they have information to transmit. Therefore, under the conventional polling process, a sec- ondary station could experience delays of tens of seconds both in initially joining a piconet and in transmitting data after entering park mode. The specification explains that the invention improves conventional communication systems by including a data field for polling as part of the inquiry message, thereby al- lowing primary stations to send inquiry messages and con- duct polling simultaneously. Id. at Abstract. The claimed invention therefore enables “a rapid response time without the need for a permanently active communication link” be- tween a parked secondary station and the primary station. Id. at Abstract. Claim 2 of the ’049 patent, which the dis- trict court treated as representative, recites: Case: 19-1835 Document: 35 Page: 4 Filed: 04/30/2020

2. A primary station for use in a communications system comprising at least one secondary sta- tion, wherein means are provided for broadcasting a series of inquiry mes- sages, each in the form of a plurality of predetermined data fields arranged ac- cording to a first communications proto- col, and for adding to each inquiry message prior to transmission an additional data field for polling at least one secondary station. LG moved to dismiss Uniloc’s Second Amended Com- plaint under Fed. R. Civ. P. 12(b)(6), arguing the claims of the ’049 patent are directed to ineligible subject matter un- der § 101. Treating claim 2 of the ’049 patent as repre- sentative, the district court granted LG’s motion. The district court held that the asserted claims are directed to the abstract idea of “additional polling in a wireless com- munication system,” analogizing the asserted claims to data manipulation claims we held ineligible in Two-Way Media Ltd. v. Comcast Cable Communications, LLC, 874 F.3d 1329 (Fed. Cir. 2017) and Digitech Image Technolo- gies, LLC v. Electronics for Imaging, Inc., 758 F.3d 1344 (Fed. Cir. 2014). Uniloc USA Inc., 379 F. Supp. 3d at 990. The district court further determined that the claims fail to recite an “inventive concept sufficient to save the claim[s].” Id. at 1000. The district court entered judgment in favor of LG. J.A. 1. Uniloc timely appeals. We have jurisdiction under 28 U.S.C. § 1295(a)(1). DISCUSSION We review a district court’s Rule 12(b)(6) dismissal un- der the law of the regional circuit, here the Ninth Circuit. Aatrix Software, Inc. v. Green Shades Software, Inc., 882 F.3d 1121, 1124 (Fed. Cir. 2018). The Ninth Circuit re- views such dismissals de novo, construing all allegations of Case: 19-1835 Document: 35 Page: 5 Filed: 04/30/2020

UNILOC USA, INC. v. LG ELECTRONICS USA, INC. 5

material fact in the light most favorable to the nonmoving party. Livid Holdings Ltd. v. Salomon Smith Barney, Inc., 416 F.3d 940, 946 (9th Cir. 2005). Patent eligibility under 35 U.S.C. § 101 is a question of law, based on underlying factual findings. SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1166 (Fed. Cir. 2018). It may be resolved on a Rule 12(b)(6) motion “when there are no factual allegations that, taken as true, prevent resolving the eligibility as a matter of law.” Aatrix, 882 F.3d at 1125. Section 101 provides that “[w]hoever invents or discov- ers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof,” may obtain a patent. 35 U.S.C. § 101. The Su- preme Court has held that “[l]aws of nature, natural phe- nomena, and abstract ideas are not patent eligible.” Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014) (quoting Assoc. for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)). We follow the Supreme Court’s two- step framework for determining patent eligibility under § 101. First, we determine whether the claims are directed to a “patent-ineligible concept,” such as an abstract idea. Id. at 217. If so, we “consider the elements of each claim both individually and ‘as an ordered combination’ to deter- mine whether the additional elements ‘transform the na- ture of the claim’ into a patent-eligible application.” Id. (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 78–79 (2012)). At Alice step one, we determine whether the claims are directed to an abstract idea. Alice, 573 U.S. at 217. In cases involving software innovations, this inquiry often turns on whether the claims focus on specific asserted im- provements in computer capabilities or instead on a pro- cess or system that qualifies an abstract idea for which computers are invoked merely as a tool. Customedia Techs., LLC v. DISH Network Corp., 951 F.3d 1359, 1364 (Fed. Cir. 2020) (citing Finjan, Inc. v. Blue Coat Systems, Inc., 879 F.3d 1299, 1303 (Fed. Cir. 2018)). We have Case: 19-1835 Document: 35 Page: 6 Filed: 04/30/2020

routinely held software claims patent eligible under Alice step one when they are directed to improvements to the functionality of a computer or network platform itself.

In DDR Holdings, LLC v. Hotels.com, L.P., for exam- ple, we held patent eligible claims directed to a system for generating a hybrid web page that maintained the “look and feel” of a host website. 773 F.3d 1245, 1257–59 (Fed. Cir. 2014). We emphasized that in “overcom[ing] a problem specifically arising in the realm of computer networks,” the claimed invention changed the normal operation of the computer network itself and was “necessarily rooted in computer technology.” Id. at 1257–58. Similarly, in En- fish, LLC v. Microsoft Corp., we held patent eligible claims directed to a self-referential database that improved the way computers operated and handled data, allowing the more efficient launching and adaptation of databases. 822 F.3d 1327, 1336–39 (Fed. Cir. 2016). And in Visual Memory LLC v. NVIDIA Corp., we held patent eligible claims “focus[ed] on a ‘specific asserted improvement in computer capabilities,’” namely the accommodation of dif- ferent types of processors without compromising perfor- mance. 867 F.3d 1253, 1259–60 (Fed. Cir. 2017). In holding the claims patent eligible, we noted that the claims were not directed to categorical data storage but rather were limited to certain types of data to be stored. Id. In Ancora Technologies, Inc. v. HTC America, Inc., we held patent eligible claims directed to a non-abstract im- provement to computer security. 908 F.3d 1343, 1347–49 (Fed. Cir. 2018). We determined the claims addressed the “vulnerability of license-authorization software to hacking” and were thus “directed to a solution to a computer-func- tionality problem.” Id. at 1349; see also Finjan, 879 F.3d at 1304–06 (holding that claims to a “behavior-based virus scan” provided greater computer security and were thus di- rected to a patent-eligible improvement in computer func- tionality). In Data Engine Technologies LLC v. Google Case: 19-1835 Document: 35 Page: 7 Filed: 04/30/2020

UNILOC USA, INC. v. LG ELECTRONICS USA, INC. 7

LLC, we held patent eligible claims reciting “a specific method for navigating through three-dimensional elec- tronic spreadsheets” because the claimed invention “im- prov[ed] computers’ functionality as a tool able to instantly access all parts of complex three-dimensional electronic spreadsheets.” 906 F.3d 999, 1007–08 (Fed. Cir. 2018). And in Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc., we held patent eligible claims directed to an improved user interface that enabled users to more quickly access stored data and programs in small-screen electronics. 880 F.3d 1356, 1359–63 (Fed. Cir. 2018). We determined that the claimed invention in Core Wireless “improve[d] the ef- ficiency of using the electronic device by bringing together a limited list of common functions and commonly accessed stored data, which can be accessed directly from the main menu.” Id. at 1363. We therefore held that “the claims [we]re directed to an improvement in the functioning of computers, particularly those with small screens.” Id. In accordance with this precedent, we hold the claims at issue are directed to a patent-eligible improvement to computer functionality, namely the reduction of latency ex- perienced by parked secondary stations in communication systems. Claim 2 of the ’049 patent recites a primary sta- tion 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.” ’049 patent at Claim 2. The addi- tional data field enables a primary station to simultane- ously send inquiry messages and poll parked secondary stations. Id. at Abstract. The claimed invention therefore eliminates or reduces the delay present in conventional systems where the primary station alternates between polling and sending inquiry messages. See, e.g., id. at 2:8– 15, 6:55–60. Therefore, like the claims in DDR, the claimed invention changes the normal operation of the communica- tion system itself to “overcome a problem specifically aris- ing in the realm of computer networks.” See 773 F.3d at Case: 19-1835 Document: 35 Page: 8 Filed: 04/30/2020

1257–58. In doing so, the claimed invention, like the im- provement in computer memory we held patent eligible in Visual Memory, enables the communication system to ac- commodate additional devices, such as battery-operated secondary stations, without compromising performance. See 867 F.3d at 1258–60. LG does not dispute that reducing latency experienced by parked secondary stations in conventional communica- tion systems is a patent-eligible improvement to computer functionality. Instead, it contends that the claims are not sufficiently directed to this purported improvement. It ar- gues the claims merely recite the observation that conven- tional inquiry messages can accommodate conventional polling “using result-based functional language” and ge- neric Bluetooth components. LG therefore contends that the district court correctly analogized to the abstract “data manipulation” claims we held ineligible in prior cases. We do not agree. The district court’s reliance on our prior cases is mis- placed. In Digitech, the claims recited “a process of taking two data sets and combining them into a single data set,” called a device profile. 758 F.3d at 1351. Although the claimed device profile could purportedly be used in reduc- ing image distortion, merely generating the claimed device profile did not alone reduce image distortion or otherwise improve image processing. Id. at 1347–48. The claims were not directed to a patent-eligible technological im- provement but rather recited “the ineligible abstract idea of gathering and combining data that does not require in- put from a physical device.” Id. at 1351. The claims we held ineligible in Two-Way Media simi- larly failed to concretely capture any improvement in com- puter functionality. In Two-Way Media, the claims recited a method of transmitting packets of information over a communications network comprising: converting infor- mation into streams of digital packets; routing the streams Case: 19-1835 Document: 35 Page: 9 Filed: 04/30/2020

UNILOC USA, INC. v. LG ELECTRONICS USA, INC. 9

to users; controlling the routing; and monitoring the recep- tion of packets by the users. 874 F.3d at 1334. Two-Way Media argued that the claims solved data transmission problems, including load management and bottlenecking, but the claimed method was not directed to those improve- ments. Id. at 1336–37. We therefore held the claims inel- igible because they merely recited a series of abstract steps (“converting,” “routing,” “controlling,” “monitoring,” and “accumulating records”) using “result-based functional lan- guage” without the means for achieving any purported technological improvement. Id. at 1337. The claims at issue do not merely recite generalized steps to be performed on a computer using conventional computer activity. Instead, they are directed to “adding to each inquiry message prior to transmission an addi- tional data field for polling at least one secondary sta- tion.” See, e.g., ’049 patent at Claim 2. And this change in the manner of transmitting data results in reduced response time by peripheral devices which are part of the claimed system. As the patent explains, for second- ary stations joining a piconet in the prior art systems, “it could take half a minute or more from the time a user moves a mouse to a cursor moving on a screen.” Id. at 2:10– 12. Because polling was “suspended during this cycle, for up to 10.24 seconds at a time,” parked secondary stations in prior art systems could experience similar delays after each period of inactivity. Id. at 2:13–16. The claimed ad- dition of a data field for polling to the inquiry message sig- nificantly reduces the response time, enabling secondary stations to respond a fraction of a second later. See, e.g., ’049 patent at 5:36–41. Even LG concedes that this reduc- tion in latency “is the very reason for polling during the inquiry process in the first place.” Appellees’ Br. 54 (citing, e.g., J.A. 1375–77, 1394). To the extent LG argues that the claims themselves must expressly mention the re- duced latency achieved by the claimed system, LG is in error. Claims need not articulate the advantages of the Case: 19-1835 Document: 35 Page: 10 Filed: 04/30/2020

claimed combinations to be eligible. We conclude 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. These claims are directed to a specific asserted improvement to the functionality of the communication system itself. The claimed invention’s compatibility with conven- tional communication systems does not render it abstract. Nor does the fact that the improvement is not defined by reference to “physical” components. Enfish, 822 F.3d at 1339. “To hold otherwise risks resurrecting a bright-line machine-or-transformation test, or creating a categorical ban on software patents.” Id. (citations omitted). Our prec- edent is clear that software can make patent-eligible im- provements to computer technology, and related claims are eligible as long as they are directed to non-abstract im- provements to the functionality of a computer or network platform itself. See Customedia Techs., 951 F.3d at 1364 (collecting cases). The claims of the ’049 patent recite a specific improvement in the functionality of the communi- cation system itself, namely the reduction of latency expe- rienced by parked secondary stations. This is sufficient to pass muster under Alice step one. Because we hold the claims patent eligible under Alice step one, we need not proceed to the second step of Alice. Visual Memory, 867 F.3d at 1262. CONCLUSION We have considered LG’s remaining arguments and find them unpersuasive. For the foregoing reasons, we con- clude that the claims of the ’049 patent are not directed to patent-ineligible subject matter under § 101 and therefore reverse and remand the district court’s decision. REVERSED AND REMANDED