US Courts of Appeal, Federal Circuit (CAFC). Decided: April 30, 2020
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 Electronics, Inc. (collectively, LG) in the United States District Court for the Northern District of California, alleging infringement of claims of U.S. Patent No. 6,993,049. LG moved to dismiss Uniloc¡¯s Second Amended Complaint arguing that the claims of the ¡¯049 patent are ineligible under 35 U.S.C. ¡× 101. And 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. But CAFC reversed and remanded the lower court¡¯s decision holding that the claims were not directed to ineligible subject matter under ¡× 101.
The ¡¯049 patent is directed to a communication system comprising a primary station and at least one secondary station. In conventional systems such as Bluetooth networks, two devices sharing a common communication channel form ad hoc networks known as ¡°piconets.¡± To join a piconet, two sets of procedures, namely an ¡°inquiry¡± procedure and a ¡°page¡± procedure, need to be completed. The inquiry procedure allows a primary station to identify secondary stations and also allows secondary stations to issue a request to join the piconet. The page procedure in turn allows a primary station to invite secondary stations to join the piconet. Once a piconet is formed, the primary station ¡°polls¡± secondary stations to determine whether they have data to share over the communication channel. In conventional systems, primary stations alternate between sending inquiry messages to identify new secondary stations and polling secondary stations already connected to the piconet to determine whether they have information to transmit so that a secondary station could experience delays of tens of seconds both in initially joining a piconet and in transmitting data after entering park mode.
According to the specification, the invention improves conventional systems by including a data field as part of the inquiry message, which allows primary stations to simultaneously conduct sending inquiry messages and polling secondary stations enabling ¡°a rapid response time without the need for a permanently active communication link between a parked secondary station and the primary station. Claim 2 of ¡®049 patent which was treated as representative by the district court recites:
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 messages, each in the form of a plurality of predetermined data fields arranged ac-cording 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.
LG argued that the claims of the ¡¯049 patent are directed to ineligible subject matter under ¡× 101 in moving the court to dismiss Uniloc¡¯s complaint. The district court granted LG¡¯s motion, holding that that the asserted claims are directed to the abstract idea of ¡°additional polling in a wireless communication system.¡±
CAFC reviewed the dismissal de novo according to the laws of the regional circuit which is Ninth Circuit in this case. The court analyzed the case following the Supreme Court¡¯s two-step framework for determining patent eligibility under ¡× 101. The first step is to determine whether the claims are directed to a ¡°patent-ineligible concept,¡± such as an abstract idea. The second step is to consider the elements of each claim both individually and as an ordered combination to determine whether the additional elements ¡®transform the nature of the claim into a patent-eligible application. Alice Corp. v. CLS Bank Int¡¯l, 573 U.S. 208, 216(2014).
At Alice step one, CAFC held that the claims at issue were directed to a patent-eligible improvement to computer functionality, namely the reduction of latency experienced by parked secondary stations in communication systems because Claim 2 of the ¡¯049 patent recites a primary station 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.¡± Here the additional data field enables a primary station to simultaneously send inquiry messages and poll parked secondary stations, thereby eliminating or reducing the delay present in conventional systems.
LG did not dispute that ¡°reducing latency experienced by parked secondary stations in conventional communication systems is a patent-eligible improvement to computer functionality, and conceded that this reduction in latency ¡°is the very reason for polling during the inquiry process,¡± but it contended that ¡°the claims themselves must expressly mention the reduced latency achieved by the claimed system.¡± CAFC was not persuaded by this argument and held that ¡°claims need not articulate the advantages of the claimed combinations to be eligible.¡± Therefore CAFC reversed and remanded the district court¡¯s decision.
LG Electronics, Inc. filed a trademark application to register QLED (in standard characters) on the Principal Register for goods including mobile phones, smart phones, laptop computers, Computers, tablet computers, and LED panels. The Trademark Examining Attorney originally refused registration on the ground that QLED is merely descriptive of Applicant¡¯s goods.
Then LG amended the application to seek registration on the Supplemental Register. But the Examining Attorney continued the the smae refusal, and also refused registration on the additional ground that QLED is generic and therefore incapable of distinguishing the identified goods.
When the Examining Attorney made both refusals final, LG filed a request for reconsideration, which the Examining Attorney denied. Applicant then appealed to TTAB (Trademark Trial and Appeal Board).
The sole issue to be decided at the TTAB was whether QLED is generic for the disputed goods and, thus unregistrable on the Supplemental Register for those goods. The TTAB affirmed the refusal.
In order to qualify for registration on the Supplemental Register, a proposed mark must be capable of distinguishing the applicant's goods or services. Generic terms are not qualified for registration. And a termm is generic if it refers to the class or category of goods or services in connection with which it is used.
The Examining Attorney maintained that QLED was an acronym for and substantially synonymous with the generic term ¡°quantum dot light emitting diode,¡± a type of display technology that is a key feature of the disputed goods, and that relevant consumers would readily recognize QLED as such.
LG contended that there was no consensus as to the meaning or understanding of QLED. However, LG did not dispute that the acronym QLED is ¡°substantially synonymous¡± with the generic term ¡°quantum dot light emitting diodes,¡± according to TTAB. After reviewing the contentions of both parties, the TTAB affirmed the refusal to register QLED on the Supplemental Register on the ground that it was generic for the disputed goods.