In Mentone Solutions LLC v Digi International Inc., 2021 WL 5291802 (Fed. Cir. Nov. 15, 2021), the United States Court of Appeals for the Federal Circuit quashed the United States District Court for the District of Delaware and former Chief Justice Leonard Stark, who declared U.S. Patent No. 6,952,413 invalid under 35 USC §101. (Stark was confirmed earlier this month to fill the next Federal Circuit vacancy created by the scheduled retirement of Judge Kathleen O’Malley in March 2022.)
The patent allows mobile communication base stations to use previously unavailable time slots in a communication transmission protocol. This has resulted in an increase in the data communication capacity of a network. More specifically, the patent describes a technique for shifting previously set uplink status flags (USFs). The offset allowed base stations to respond to transmissions without the prior hurdle of waiting to send data as required by traditional fixed USFs.
Representative claim 5 reflects the technical details which allow the capacity of the network to be increased:
5. Multiple access communication method in a mobile station, comprising the steps of:
receiving an assignment of at least a first PDCH (packet data channel) and a second PDCH;
monitoring an assigned PDCH to detect a USF; and
transmit on an assigned PDCH corresponding to the USF,
wherein (i) if the shifted USF operation is not used, then a first assigned PDCH is monitored to detect a USF corresponding to the first assigned PDCH and (ii) if the shifted USF operation is used, then a second PDCH assigned is monitored to detect the USF corresponding to the first assigned PDCH and a USF corresponding to the second assigned PDCH.
The district found that claim 5 was directed to the abstract idea of ”receiving a USF and transmitting data during the appropriate time slots.” The Federal Circuit felt that the characterization was too high a level description of the use of FSUs, which best described the state of the art. The characterization did not reflect the invention cited by the claims, and more specifically the characterization did not mention the technological improvement, i.e. the USF displacement cited by the claims.
In so concluding, the Federal Circuit looked at the specification to identify the problem that was solved and to verify the details of how the problem was solved. The patent specification, according to the Federal Circuit, revealed how moving USFs resulted in improved network capacity.
With this understanding of the subject matter of the patent and how the objective of increasing data capacity was achieved, the Federal Circuit reviewed the claims to determine if they explained how and why the status indicators, USF , would be moved. The Federal Circuit specifically determined that the claims identified details of how the data capacity enhancement results were achieved, the USF lag cited. The Federal Circuit therefore concluded that Claim 5 did more than state a desired objective, enhanced data capacity. Instead, he recited a particular method of breaking the previous fixed location of the USF status flag, which breaking resulted in the desired improvement in increased data capacity. Finding that the claims contained details of how to increase data capacity, the Federal Circuit deemed the claims patentable.
Finally, given that the Federal Circuit found that claims to technically improve the data capacity of the network under Alice Corp. against CLS Bank Int’l, 573 US 208, 216 (2014) first step Federal Circuit failed to reach Alice second step.
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