Uniloc USA, Inc. v. ADP, LLC (Fed. Cir. 2019)
This case includes a number of interesting twists — but at its core it is an eligibility decision.
Uniloc’s Patent No. 7,069,293 claims a method of centralized software distribution where the application program file being distributed (called a “packet” in the patent) includes software to initiate installation of the program (called a “registration operation” in the patent). Here is the relevant portion of claim 1:
A method … comprising … preparing a file packet associated with the application program and including a segment configured to initiate registration operations for the application program at the target on-demand server.
You are thinking – this seems obvious and anticipated even with the 1998 priority date. But, the district court decided to end the case early on eligibility and so did not reach the question of obviousness. On appeal here, the Federal Circuit reversed – holding that Uniloc’s claims are patent eligible — and not directed to an abstract idea. The court writes:
[T]he claims of the ’293 patent are directed to the use of file packets with segments configured to initiate centralized registration of an application from an application server, and that this is not an abstract idea. It is true, as Appellees argue, that the goal of the claims is functional: to allow centralized distribution of
software. . . . But the patent claims a particular improvement in how this is done—i.e. by use of a file packet to enable the further functionality of initiating on-demand registration of the application. This is the clear “focus” of the claims and the asserted advance described in the specification.
Patent No. 6,324,578: In this second case, the Federal Circuit also found the claims eligible. These client-server method claims basically require (1) obtaining preferences from both a user and administrator and then (2) executing an application program using the set preferences. The Federal Circuit found these steps eligible:
We agree with Uniloc that this is not just a functional claim using conventional technological components. Instead, the claim is directed to a particular way of using a conventional application server to nevertheless allow on-demand installation of an application incorporating preferences from two different sources…. This is not an abstract idea under Alice step one. The two specific added components do not merely fulfill their ordinary roles—their use together on an application server represents a different way of achieving the improvement claimed in the ’578 patent.
Moreover, even if the claim was abstract under step one, it would still be eligible under step two.
Although the appellate panel sided with the patentee as to these two patents, the other two patents in the case did not survive.
Patent No. 6,510,466 is based on the same 1998 filing date as the ‘293, but has a vastly different set of claims. The client-server claims here require: (a) receiving a login request of a user on the client; (2) in response to the login request, creating a desktop interface on the client that includes icons for some applications installed on the server; (3) upon selection by the user, providing an instance of the program to the client for execution. In this case, the court found the claims too abstract:
The focus of the claims here is on the abstract idea of using a desktop interface to access an application server. The alleged functional improvements in efficiency arise wholly out of the conventional advantages of using networked computers as tools, not a particular improvement in the computer or network.
Patent No. 6,728,766: The claims here are directed to license management — and the server provides an “availability indication” based upon a “user policy.” The court explains that “this is an abstract idea” that “does not go beyond requiring the collection, analysis, and display of available information.”
This quad of cases may be helpful for some folks because all four have the same specification but with dramatically different results regarding eligibility. In my mind, however, the distinctions are hard to comprehend — especially as between the first three cases.
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