Case: 19-2072 Document: 40 Page: 1 Filed: 04/07/2020
NOTE: This disposition is nonprecedential.
United States Court of Appeals for the Federal Circuit ______________________
UNILOC USA, INC., UNILOC LUXEMBOURG S.A., UNILOC 2017 LLC, Plaintiffs-Appellants
v.
SAMSUNG ELECTRONICS AMERICA, INC., SAMSUNG ELECTRONICS CO., LTD., Defendants-Appellees ______________________
2019-2072 ______________________
Appeal from the United States District Court for the Eastern District of Texas in No. 2:18-cv-00042-JRG-RSP, Judge J. Rodney Gilstrap. ______________________
Decided: April 7, 2020 ______________________
JAMES J. FOSTER, Prince Lobel Tye LLP, Boston, MA, for plaintiffs-appellants.
ALLAN A. KASSENOFF, Greenberg Traurig LLP, New York, NY, for defendants-appellees. Also represented by RICHARD A. EDLIN. ______________________ Case: 19-2072 Document: 40 Page: 2 Filed: 04/07/2020
Before MOORE, CLEVENGER, and CHEN, Circuit Judges. MOORE, Circuit Judge. Uniloc USA, Uniloc Luxembourg and Uniloc 2017 (col- lectively, Uniloc) appeal the United States District Court for the Eastern District of Texas’ judgment of invalidity as to claim 18 of U.S. Patent No. 6,868,079. Because the dis- trict court did not err in holding claim 18 indefinite, we af- firm. BACKGROUND Uniloc Luxembourg, S.A. and Uniloc USA, Inc. sued Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc. (collectively, Samsung), alleging infringe- ment of claims of the ’079 patent. 1 The ’079 patent is di- rected to a radio communication system in which a secondary station (e.g., a mobile phone) requests services from a primary station (e.g., a cellular base station). ’079 patent at Abstract; id. at 1:56–67. According to the speci- fication, a secondary station communicates with a primary station over an uplink communication channel divided into frames, where each secondary station registered with the primary station is allocated a time slot within each frame. Id. at 1:43–46. In conventional signaling schemes, a sec- ondary station would use that time slot to make a request for services to a base station and then wait for an acknowl- edgement from the base station. Id. at 3:42–45. If the sec- ondary station did not receive an acknowledgment within a predetermined period of time, the secondary station scheduled another request. Id. at 3:45–48. The claimed invention purportedly improves upon response times in
1 In May 2018, Uniloc Luxembourg assigned the ’079 patent to Uniloc 2017, which then joined the suit as a plain- tiff in September 2018. Uniloc Luxembourg and Uniloc USA no longer hold an interest in the patent or this appeal. Case: 19-2072 Document: 40 Page: 3 Filed: 04/07/2020
UNILOC USA, INC. v. SAMSUNG ELECTRONICS AMERICA 3
conventional signaling schemes by sending requests from the secondary stations in at least a majority of the time slots allocated to it, until an acknowledgment is received from the primary station. Id. at 1:60–2:2. Claim 18 recites: 18. A radio communication system, comprising: a primary station and a plurality of respec- tive secondary stations, the primary station having means for allo- cating respective time slots in an uplink channel to the plurality of respective sec- ondary stations to transmit respective re- quests for services to the primary station to establish required services, wherein the respective secondary stations have means for re-transmitting the same respective requests in consecutive allo- cated time slots without waiting for an acknowledgement until said acknowledge- ment is received from the primary station, wherein said primary station determines whether a request for services has been transmitted by at least one of the respec- tive is [sic] secondary stations by determin- ing whether a signal strength of the respective transmitted request of the at least one of the respective secondary sta- tions exceeds a threshold value. (emphases added). The parties agree that the term “means for allocating respective time slots . . . to establish required services” is a means-plus-function term under 35 U.S.C. § 112 ¶ 6, hav- ing a function of “allocating respective time slots to estab- lish required services.” In April 2019, the magistrate judge issued a Claim Construction Memorandum and Order, Case: 19-2072 Document: 40 Page: 4 Filed: 04/07/2020
holding indefinite claim 18 of the ’079 patent because “Uniloc ha[d] pointed to nothing in the specification that links the claimed function to [the structural] elements” Uniloc identified. J.A. 26. The magistrate judge also held the claim indefinite “for failure to provide an algorithm.” J.A. 27. The district court adopted the magistrate judge’s Claim Construction Memorandum and Order on May 20, 2019. J.A. 3. Following the district court’s May 20 order, the parties stipulated to the entry of judgment of invalidity as to claim 18. 2 J.A. 291. The district court entered final judgment based on the parties’ stipulation. Uniloc appeals, arguing that the district court erred in holding claim 18 in- definite. We have jurisdiction under 28 U.S.C. § 1295(a)(1). DISCUSSION We review a district court’s indefiniteness determina- tion de novo, except for necessary subsidiary fact findings, which we review for clear error. Cox Commc’ns v. Sprint Commc’n Co., 838 F.3d 1224, 1228 (Fed. Cir. 2016). Under 35 U.S.C. § 112, patent claims must “particularly point[ ] out and distinctly claim[ ] the subject matter” regarded as the invention. Pre-AIA section 112 ¶ 6 allows a patentee to express an element of a claim as a means for performing a specified function. 35 U.S.C. § 112 ¶ 6 (2006). In ex- change for using this form of claiming, the patent specifi- cation must disclose with sufficient particularity the structure for performing the claimed function and clearly link that structure to the function. See Ibormeith IP, LLC v. Mercedes–Benz USA, LLC, 732 F.3d 1376, 1379 (Fed. Cir. 2013). For a computer-implemented invention claimed
2 The parties also stipulated to the dismissal with prejudice of Uniloc’s claims of infringement against Sam- sung, except as to claim 18, and the dismissal without prej- udice of Samsung’s counterclaims. Case: 19-2072 Document: 40 Page: 5 Filed: 04/07/2020
UNILOC USA, INC. v. SAMSUNG ELECTRONICS AMERICA 5
in means-plus-function format, the specification must dis- close the algorithm that the computer performs to accom- plish the claimed function. Aristocrat Techs. Australia Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008). Failure to disclose the corresponding algorithm for a computer-implemented means-plus-function term ren- ders the claim indefinite. Ergo Licensing LLC v. Care- Fusion 303, Inc., 673 F.3d 1361, 1363 (Fed. Cir. 2012). Uniloc argues that the district court erred in holding that “means for allocating respective time slots . . . to es- tablish required services” lacks definite corresponding structure in the specification.
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Case: 19-2072 Document: 40 Page: 1 Filed: 04/07/2020
NOTE: This disposition is nonprecedential.
United States Court of Appeals for the Federal Circuit ______________________
UNILOC USA, INC., UNILOC LUXEMBOURG S.A., UNILOC 2017 LLC, Plaintiffs-Appellants
v.
SAMSUNG ELECTRONICS AMERICA, INC., SAMSUNG ELECTRONICS CO., LTD., Defendants-Appellees ______________________
2019-2072 ______________________
Appeal from the United States District Court for the Eastern District of Texas in No. 2:18-cv-00042-JRG-RSP, Judge J. Rodney Gilstrap. ______________________
Decided: April 7, 2020 ______________________
JAMES J. FOSTER, Prince Lobel Tye LLP, Boston, MA, for plaintiffs-appellants.
ALLAN A. KASSENOFF, Greenberg Traurig LLP, New York, NY, for defendants-appellees. Also represented by RICHARD A. EDLIN. ______________________ Case: 19-2072 Document: 40 Page: 2 Filed: 04/07/2020
Before MOORE, CLEVENGER, and CHEN, Circuit Judges. MOORE, Circuit Judge. Uniloc USA, Uniloc Luxembourg and Uniloc 2017 (col- lectively, Uniloc) appeal the United States District Court for the Eastern District of Texas’ judgment of invalidity as to claim 18 of U.S. Patent No. 6,868,079. Because the dis- trict court did not err in holding claim 18 indefinite, we af- firm. BACKGROUND Uniloc Luxembourg, S.A. and Uniloc USA, Inc. sued Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc. (collectively, Samsung), alleging infringe- ment of claims of the ’079 patent. 1 The ’079 patent is di- rected to a radio communication system in which a secondary station (e.g., a mobile phone) requests services from a primary station (e.g., a cellular base station). ’079 patent at Abstract; id. at 1:56–67. According to the speci- fication, a secondary station communicates with a primary station over an uplink communication channel divided into frames, where each secondary station registered with the primary station is allocated a time slot within each frame. Id. at 1:43–46. In conventional signaling schemes, a sec- ondary station would use that time slot to make a request for services to a base station and then wait for an acknowl- edgement from the base station. Id. at 3:42–45. If the sec- ondary station did not receive an acknowledgment within a predetermined period of time, the secondary station scheduled another request. Id. at 3:45–48. The claimed invention purportedly improves upon response times in
1 In May 2018, Uniloc Luxembourg assigned the ’079 patent to Uniloc 2017, which then joined the suit as a plain- tiff in September 2018. Uniloc Luxembourg and Uniloc USA no longer hold an interest in the patent or this appeal. Case: 19-2072 Document: 40 Page: 3 Filed: 04/07/2020
UNILOC USA, INC. v. SAMSUNG ELECTRONICS AMERICA 3
conventional signaling schemes by sending requests from the secondary stations in at least a majority of the time slots allocated to it, until an acknowledgment is received from the primary station. Id. at 1:60–2:2. Claim 18 recites: 18. A radio communication system, comprising: a primary station and a plurality of respec- tive secondary stations, the primary station having means for allo- cating respective time slots in an uplink channel to the plurality of respective sec- ondary stations to transmit respective re- quests for services to the primary station to establish required services, wherein the respective secondary stations have means for re-transmitting the same respective requests in consecutive allo- cated time slots without waiting for an acknowledgement until said acknowledge- ment is received from the primary station, wherein said primary station determines whether a request for services has been transmitted by at least one of the respec- tive is [sic] secondary stations by determin- ing whether a signal strength of the respective transmitted request of the at least one of the respective secondary sta- tions exceeds a threshold value. (emphases added). The parties agree that the term “means for allocating respective time slots . . . to establish required services” is a means-plus-function term under 35 U.S.C. § 112 ¶ 6, hav- ing a function of “allocating respective time slots to estab- lish required services.” In April 2019, the magistrate judge issued a Claim Construction Memorandum and Order, Case: 19-2072 Document: 40 Page: 4 Filed: 04/07/2020
holding indefinite claim 18 of the ’079 patent because “Uniloc ha[d] pointed to nothing in the specification that links the claimed function to [the structural] elements” Uniloc identified. J.A. 26. The magistrate judge also held the claim indefinite “for failure to provide an algorithm.” J.A. 27. The district court adopted the magistrate judge’s Claim Construction Memorandum and Order on May 20, 2019. J.A. 3. Following the district court’s May 20 order, the parties stipulated to the entry of judgment of invalidity as to claim 18. 2 J.A. 291. The district court entered final judgment based on the parties’ stipulation. Uniloc appeals, arguing that the district court erred in holding claim 18 in- definite. We have jurisdiction under 28 U.S.C. § 1295(a)(1). DISCUSSION We review a district court’s indefiniteness determina- tion de novo, except for necessary subsidiary fact findings, which we review for clear error. Cox Commc’ns v. Sprint Commc’n Co., 838 F.3d 1224, 1228 (Fed. Cir. 2016). Under 35 U.S.C. § 112, patent claims must “particularly point[ ] out and distinctly claim[ ] the subject matter” regarded as the invention. Pre-AIA section 112 ¶ 6 allows a patentee to express an element of a claim as a means for performing a specified function. 35 U.S.C. § 112 ¶ 6 (2006). In ex- change for using this form of claiming, the patent specifi- cation must disclose with sufficient particularity the structure for performing the claimed function and clearly link that structure to the function. See Ibormeith IP, LLC v. Mercedes–Benz USA, LLC, 732 F.3d 1376, 1379 (Fed. Cir. 2013). For a computer-implemented invention claimed
2 The parties also stipulated to the dismissal with prejudice of Uniloc’s claims of infringement against Sam- sung, except as to claim 18, and the dismissal without prej- udice of Samsung’s counterclaims. Case: 19-2072 Document: 40 Page: 5 Filed: 04/07/2020
UNILOC USA, INC. v. SAMSUNG ELECTRONICS AMERICA 5
in means-plus-function format, the specification must dis- close the algorithm that the computer performs to accom- plish the claimed function. Aristocrat Techs. Australia Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008). Failure to disclose the corresponding algorithm for a computer-implemented means-plus-function term ren- ders the claim indefinite. Ergo Licensing LLC v. Care- Fusion 303, Inc., 673 F.3d 1361, 1363 (Fed. Cir. 2012). Uniloc argues that the district court erred in holding that “means for allocating respective time slots . . . to es- tablish required services” lacks definite corresponding structure in the specification. It argues the ’079 patent dis- closes several algorithms for allocating the respective time slots that provide enough direction for a person of skill in the art to create an operative software program. We do not agree. The specification does not disclose an algorithm de- scribing how the claimed “allocating respective time slots . . . to establish required services” is performed. In- stead, the specification merely restates the claimed func- tion. For example, the specification discloses that each secondary station is allocated a time slot in each frame of the uplink channel and that each secondary station can de- termine the time slot it is allocated. ’079 patent at 3:25– 32; see also id. at 3:36–41 (describing that the base station can increase the capacity of an uplink channel “by not allo- cating a time slot for every [secondary station] in every frame”). Merely describing the results of an unspecified al- gorithm in this manner, however, is not sufficient to satisfy the requirements of § 112 ¶ 6. See Aristocrat Techs., 521 F.3d at 1334–35; see also Ergo Licensing, 673 F.3d at 1365 (holding indefinite a claim reciting a computer-imple- mented means-plus-function term where “[t]he specifica- tion merely provide[d] functional language and d[id] not contain any step-by-step process” for performing the claimed function). And the failure to disclose an algorithm Case: 19-2072 Document: 40 Page: 6 Filed: 04/07/2020
is not excused merely because a person of ordinary skill purportedly “would be able to devise a means to perform the claimed function.” Function Media, L.L.C. v. Google, Inc., 708 F.3d 1310, 1319 (Fed. Cir. 2013). We therefore agree with the district court that the specification fails to provide sufficient structure to satisfy the requirements of § 112 ¶ 6. Accordingly, we affirm the district court’s judg- ment that claim 18 of the ’079 patent is invalid for indefi- niteness. CONCLUSION We have considered the parties’ remaining arguments and find them unpersuasive. Because the district court correctly held that claim 18 of the ’079 patent is indefinite, we affirm the district court’s judgment of invalidity. AFFIRMED