In this Patent Family: Some Claims are Eligible Others Are Not

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.

= = = = =

58 thoughts on “In this Patent Family: Some Claims are Eligible Others Are Not

  1. 10

    Bottom line is that there is no sense to 101. We need legislative reform and the dissolution of the CAFC. That is the only hope.

    1. 10.1

      If that’s your “only hope” then it’s probably time to go up the hilltop and blow your br a in s out. Make a big spectacle out of it so we can all see how serious you are.

      1. 10.1.1

        What do you think MM’s real job is? Security guard or something in the lawn maintanence arts?

    2. 10.2

      You say there is “no sense” to 101 and yet most of us can predict the outcome of these cases with at least as much certainty as 112 or 103. On top of that, I hardly ever get a 101 rejection and when I do it’s easily overcome.

      Golly, I wonder if your problem is really that you want to protect g ar bage claims written by ga rb age people and that’s gotten more difficult for you (for good reasons)?

      It’s all soooo mysterious. Right, Dennis?

      1. 10.2.1

        MM, (ignoring all the personal attacks), I am referring to litigation and not prosecution. I rarely have to deal with 101 outside of the business method art units. But when it comes time to litigation, then 101 does become relevant and there is little sense to it.

        I don’t disagree that 103 is as much a problem post KSR.

        1. 10.2.1.1

          when it comes time to litigation, then 101 does become relevant and there is little sense to it

          You’re just repeating yourself. The fact is that most 101 cases — including litigated cases — are highly predictable. Certainly more predictable than 103. In part, that’s because most eligibility issues do not involve 103 (the relationship of the recited eligible and ineligible subject matter to the prior art is admitted, expressly or implicitly; e.g., “the process can be implemented on any programmable computer” etc).

          103 is as much a problem post KSR

          Right, except the source of the problem is the non-statutory “secondary factors” which exist to allow patentees to perform an end-around the statute itself. Hence the lack of any concerted effort to rewrite the statute. But just wait until those extra-statutory exceptions are diminished substantially (as they should be). Then we’ll hear some Class AAA whining from the usual suspects.

          1. 10.2.1.1.1

            “Certainly more predictable than 103.”

            Stupidest thing I’ve read all day. There is no cognizable pattern to the CAFC’s Alice/Mayo jurisprudence.

            “In part, that’s because most eligibility issues do not involve 103”

            Most? Oops, I was wrong. This is even more brain dead. s103 addresses patentability, not patent-eligibility. No s103 involves patent eligibility.

            “the process can be implemented on any programmable computer”

            Fake quote from the fake lawyer, and Deihr, Bilski, and Alice Corp. hold that a computer makes no difference.

            “Right, except the source of the problem is the non-statutory ‘secondary factors’”

            They’re not “non-statutory.” Most statutory tests involving some form of judgment use an open-ended list of factors the courts are allowed to define in order to further the statutory ends, Mr. fake lawyer. Contrast exceptions, which rarely have a statutory basis, and when there are statutes for exceptions, they are very narrowly construed, Mr. fake lawyer.

            “Then we’ll hear some Class AAA whining from the usual suspects.”

            For you I have only Class AAA mocking.

          2. 10.2.1.1.2

            Extra-statutory aspects of 103, BAD

            Extra-statutory aspects of 101, Gooooooood.

            sigh…

            1. 10.2.1.1.2.1

              Les, it is (painfully) easy to see the common thread:

              If it is bad for a patent holder – Malcolm is in delight.

              If it is good for a patent holder, Malcolm goes on an apoplectic rant.

              Since he portrays himself as one that obtains patent rights, the cognitive dissonance must be overwhelming.

  2. 9

    “There is nothing unconventional about the ‘ordered combination’ that is not merely the sum of the parts. See In re TLI Commc’ns Patent Lit. v. AV Automotive, LLC, 823 F.3d 607, 615 (Fed. Cir. 2016) (holding that where ‘recited physical components behave exactly as expected according to their ordinary use,’ they do not constitute an inventive concept).”

    Every ordered combination is “the sum of the parts” of a claim. As to the combination behaving “exactly as expected,” that’s a s103 issue, and neither s101 nor s103 require an “inventive concept.”

    Freaking dullards in black robes!

    1. 9.1

      They aren’t dullards, but people picked by Silicon Valley and given to Obama to appoint to the CAFC for large sums of money to Obama and the D’s.

      Most them likely pledged “to get those patents under control” in exchange for the appointment.

      As a group, they are unfit to serve on the federal judiciary and should be removed.

    2. 9.2

      The court is referring specifically to the physical components recited in the invention and noting that they are old/obvious, as set forth in the claim.

      As such, those old components can not confer eligibility upon a claim which recites only an ineligible abstraction. Allowing otherwise would permit ineligible but non-obvious abstractions to be claimed and protected in prior art contexts.

      In short, you’re the “dullard” here.

      1. 9.2.1

        “old” is separate from “eligible.”

        Protons, neutrons and Electrons are all old.

        As I (and numerous others) have amply pointed out, there are easily eligible claims that contain nothing but old elements. Your desired “mantra” is easily shown to be a logical fallacy with that point alone.

        No, Malcolm, the dullard label has already been appropriately applied.

        You also attempt the canard of wanting to use “non-obvious” outside of the legal context (drawing forth the Wolfgang Pauli expression of “Not even wrong” that had an entire Patently-O post on the matter).

        1. 9.2.1.1

          as set forth in the claim

          i.e., the old non-abstract elements are configured as described in the prior art.

          Learn to read, Bildo. Either you can’t read or you are an intellectually dishonest hack. Dennis, have you ever figured out which is which? (just kidding, D — I still have the emails).

          1. 9.2.1.1.1

            Your Accuse Others is noted.

      2. 9.2.2

        Gee, Malcolm, coming from an unemployed guy living in his mother’s basement, that hurts.

        That said, perhaps you should read Diamond v Diehr. I’m pretty sure computers and rubber curing molds were old in 1981.

        You’ve never prosecuted or litigated a patent in your life

        1. 9.2.2.1

          perhaps you should read Diamond v Diehr.

          ROTFLMAO

          I have, probably a hundred times. I’ve also read the dissent. And guess what? After Mayo and Alice all that’s left of Diehr is the easy answer to the simple question that the Court was asked to decide. Specifically: the mere existence of ineligible subject matter in a claim is insufficient by itself to determine that a claim is ineligible. That’s it.

          It’s 2019. If you can’t figure out the basics of 101 at this point, find another job.

          You’ve never prosecuted or litigated a patent in your life

          LOL You couldn’t be more wrong.

          Also I’ve been one of the major players in this area (online, anyway) for the past decade. In part, that’s due to Dennis’ support. In part that’s due to the existence of easy targets like you who keep popping up like zombies over the hillside, reciting the same script as if you were born yesterday.

          [shrugs]

          1. 9.2.2.1.1

            You still clench tight your eyes to the Gordian Knot.

            Ah yes, to paraphrase Malcolm: there are no contradictions if you close your eyes to the contradictory cases (and clearly, that is not just at the CAFC or lower levels).

    3. 9.3

      101 recites “new” and the Supreme Court has held that you can’t claim an abstraction (eg a correlation) unless there’s something else inventive in the claim. Congress can’t change that holding, by the way, and they aren’t even going to try. You are being played like a fiddle, son. Fun to watch.

      1. 9.3.1

        Yes Malcolm, the larger problem here is that the score board is broken with the Common Law re-scrivining by the Supreme Court.

        You pointing out what the Court has done is NOT an answer, but merely the key part of the problem.

        I note as well that all three branches of the government have each noted this AS a problem.

        What I have put forth as points in my posts are true — not because I have said them; but rather, I have said them because they are true.

        As far as “inventive,” you really need to understand just what the Act of 1952 did and just why 103 was carved out of the prior single paragraph.

        Your “advocacy” to the contrary is quite unethical.

        As to “Congress can’t change that holding, by the way, and they aren’t even going to try. ” — you are wrong on SO many levels – from “can” (they obviously can, given which single branch has been allocated the actual authority to write the statutory law that is patent law: to their attempting to do so (as witness your recent triggering with the actual current bi-partisan efforts of Congress abrogating ALL those eligibility decisions.

        Your post here paints you merely to be in denial.

        1. 9.3.1.1

          you really need to understand just what the Act of 1952 did

          So says the guy who plainly has no idea what the Act of 1952 did, and whose broken back is covered with the tire tracks of numerous 9-0 patent decisions directly contradicting his bizarre and nonsensical beliefs.

          Hang it up, Bildo. You’re not even funny anymore.

          1. 9.3.1.1.1

            It has been my clear intent to NOT be “funny” with the law. You handle that all too well on your own.

            Of course, you depend on the muckery of the Court precisely because you do not like what Congress has written. You despise the Rule of Law because it does not align with your feelings.

            Your emotions just don’t change the Rule of Law, nor do they change what Congress wrote in the Act of 1952. You can flail away all you want, kick up as much dust as you want, and continue to implore the Judicial Branch to overstep its bounds and re-scrivin the statutory law – none of that changes the meaning or intent of Congress. All your “Accuse Others” of plainly no idea what the Act of 1952 did just does not match reality. No amount of spin from you will do that. No amount of spin can change the fact that I am correct in what I say. What is say is correct, not because I am the one saying it. I am saying it because it is correct.

  3. 8

    Given the multiple important issues here — most especially the rulings that some claims are 101 eligible and some not arising from the same spec — warrants re-designating this case as precedential.

    1. 8.1

      CAFC case law is a smorgasbord of contradictions. A judge can pick and choose to arrive at any capricious decision. Just roll a dice and accept the edicts of a group of capricious children in black robes.

      1. 8.1.1

        A few terrible decisions notwithstanding, it’s actually not difficult to predict in most cases how the 101 decision turns out. If you find it too “confusing”, the week out a different occupation. Plumbers make good money, you know. And the patent profession doesn’t need more born yesterday know-nothings like you.

        1. 8.1.1.1

          LOL — “then seek”

          Clearly we need more patents on how to proofread a sentence!

        2. 8.1.1.2

          A few terrible decisions notwithstanding,

          Translation: “Except for the decisions that actually prove that the Common Law path is hopelessly contradictory, there are no contradictions”

          We’ve been down this path already Malcolm (more than once).

          And we both know what happens when this is pointed out to you:
          You
          Run
          Away.

          1. 8.1.1.2.1

            decisions that actually prove that the Common Law path is hopelessly contradictory

            There’s nothing “hopeless” about it. Unless of course your “hope” is that patent law reverts to State Street in which case you might as well as hope for monkeys to fly out of your behind and serve you up some delicious homemade monkey fudge.

            All that’s need to resolve the “contradictions” in the CAFC’s case law is to eliminate the computer exception for protecting logic applied to data. Voila! No more contradiction. The world keeps turning, progress in computing proceeds without the baggage of junk patents, and resources are directed to the arts which the patent system was intended to protect rather than Silly Con Bro “apps” for locating the most eco-friendly truck serving avocado toast.

            1. 8.1.1.2.1.1

              Nice attempt at spin there – but clearly the “hope” or “hopelessness” has nothing to do with any personal feelings (your mindless as hominem path does not fit), and has to do with the plain facts — plain facts as I have mentioned that have been noted by all three branches of the government.

              This is precisely why the current moves in Congress have you going out of your mind (what little of that there is).

              State Street has nothing to do with this.

              This is NOT limited to the CAFC.

              Heck, this is not even limited to the computing arts.

        3. 8.1.1.3

          The irony of you with your active cognitive dissonance telling anyone else to seek out a new profession is…

          …stultifying.

  4. 7

    Is it remarkable that the Federal Circuit does not compare and contrast the Uniloc inventions to any of the inventions considered in the Supreme Court eligibility cases? Is it because the Uniloc inventions and the inventions that have been considered by the Supreme Court are so different from each other that it is not easy to compare and contrast them? Do we have enough guideposts from the Supreme Court to decide with reasonable certainty where the Supreme Court will go when it next picks up an eligibility case?

    1. 7.1

      “Is it remarkable that the Federal Circuit does not compare and contrast the Uniloc inventions to any of the inventions considered in the Supreme Court eligibility cases?”

      Is it remarkable that the Federal Circus doesn’t bother to cite the language of s101?

      1. 7.1.1

        Is it remarkable that the Federal Circus doesn’t bother to cite the language of s101?

        Not really, given that without the judicial exceptions backing it up the statute itself is, on its face, a ridiculous joke drafted by incompetents and willfully ignorant st00ges.

        1. 7.1.1.1

          Not really? A s101 case having no basis in s101. Dullard law.

          BTW, statutes don’t rely on judicial exception. 99.99% of statutes don’t have judicial exceptions, fake lawyer.

          You cannot even form a coherent argument

        2. 7.1.1.2

          without the judicial exceptions backing it up the statute itself is, on its face, a ridiculous joke drafted by incompetents and willfully ignorant st00ges.

          Nice admission — and tantamount that what I post as to the actual words of Congress is factually on point, as well as verifies my point as to your desire for the judicial muckery.

          I could imagine your apoplectic rants were the Court see the hand-writing on the wall with the Congress move to abrogate ALL Court 101 cases, and instead try to maintain its “authority” by self-censoring and applying the Kavanaugh Scissors.

          Either way, your beloved judicial legislating from the bench would be gone, and you would be left with what actually occurred with the Act of 1952 (and even as you mindlessly attempt to denigrate me on that point, your own admission implicates that you agree with my views through your denigration of the Act itself without the judicial muckery).

          This has become a “Heads, anon wins and Tails, Malcolm loses” type of thing.

  5. 6

    My, the apoplectic rants spill over to this thread — I see that Malcolm is still emotionally triggered.

    1. 6.1

      “My, the apoplectic rants spill over to this thread — I see that Malcolm is still emotionally triggered.”

      Actually, I’m triggered. One stupid CAFC decision after another.

      Malcolm is just a pretender (badly) playing patent attorney. Take this Malcolm quote: “It’s almost as if satisfying a part of the patent statute depends on the details of what is being claimed.” Notice how the boy blunder doesn’t notice that the requirements of s101 weren’t even discussed?

  6. 5

    “In this patent family, some claims are anticipated and some aren’t”

    Super exciting stuff! It’s almost as if satisfying a part of the patent statute depends on the details of what is being claimed.

    Golly it must be so confusing. Maybe there are people out there who charge for the service of helping people understand the issues? Or people who do so freely on blogs? But probably not any academics. Gotta worry about appearing “biased”, you know.

  7. 4

    Hey! Here’s a great idea: let’s let the free market decide who is 2/3 of a human and who isn’t. Oops! I meant what’s eligible and what isn’t. Same dif, of course, because teh free market is the best decider ever. Can anyone argue otherwise? Nobody ever has done so as far as the glibt@rd maximalists know. They are very serious people! And they love that invisible hand running up their thighs. Thrilling stuff! Smells like money. And something else, too …

    1. 4.1

      “Hey! Here’s a great idea: let’s let the free market decide who is 2/3 of a human and who isn’t. Oops! I meant what’s eligible and what isn’t.”

      How about we let the Congress decide what qualifies as patent-eligible?

      FYI, the proportion you’re thinking of is 3/5ths, but you’re not an attorney and you’ve never read the Constitution.

      1. 4.1.1

        You’re going to like what Congress decides even less than what the court decides.

        1. 4.1.1.1

          …says the guy on an apoplectic rant after seeing what Congress intends to do…

        2. 4.1.1.2

          going to like what Congress decides even less…

          As to 101? No. That clearly would be you as seen by your rants across multiple threads.

          As to the attempts at Trojan Horses in 112 and 100?

          Hmm, here you do have a point. Good thing then that these “sneaks” have been noticed and people have already started pointing out why these landmines need to be stopped.

  8. 3

    Maybe the best way for the patent maximalists to get their dmbfck 101 legislation passed is to have Perznit Raycyst Shirtstain declare a national patent emergency. Because there’s a shortage! Plus the “delete certain content” arts are really suffering. Almost as bad as the online poker game arts. Right, Dennis? Let’s hear it from an expert.

    1. 3.1

      “Maybe the best way for the patent maximalists to get their dmbfck 101 legislation passed is to have Perznit Raycyst Shirtstain declare a national patent emergency.”

      This tells me that you’re an incel living in your mother’s basement and likely have 264,000+ comments on TheHill and ThinkProgress each between your three accounts.

      1. 3.1.1

        And this tells me you’ve been inhaling Big Jeans a n a l vapors nonstop for fifteen years.

        1. 3.1.1.1

          …and there is the Malcolm (se xu al) 0bsess10n again…

          1. 3.1.1.1.1

            I notice how every patent attorney has USPTO and/or litigation war stories to share and day-to-day prosecution issues to discuss. Not Malcolm. He’s a total pretender. Someone who pretends to be a patent attorney? He’s not even an attorney – just freaking weird.

        2. 3.1.1.2

          “And this tells me you’ve been inhaling Big Jeans a n a l vapors nonstop for fifteen years”

          I obviously hit a nerve

          1. 3.1.1.2.1

            Notice his Accuse Others meme sneaking in there?

            Only one person in the patent blogosphere has been shown to be a blight through objective proof for anywhere near the Malcolm accusation of “15 years.”

            And yes, that would be Malcolm and his 14 year anniversary of this past February here at Patently-O.

            1. 3.1.1.2.1.1

              … with the “support of Dennis” and all

              (just remind Malcolm who has had more posts expunged than anyone else — more posts expunged than everyone else combined — when you ask him to explain what “support” means to him)

              1. 3.1.1.2.1.1.1

                Case in point – Malcolm has just had another huge set of posts expunged from the thread on which he posted his insults on the wrong thread, then tried to make it seem like he had made no mistake at all.

                Then he doubled down with an emotional rant unconnected with patent law.

  9. 2

    Dennis – I think you missed their holding on the ‘578? That was found eligible too; I have not looked at any of these claims in detail

    1. 2.1

      Yes. I missed that on my initial pass through the case.

    2. 2.2

      Hey JNG,

      Hope you’re doing well.

  10. 1

    “I’ll note that it is not clear to me how ___________ ”

    Dennis, did you want to complete this thought? (Guessing it’s something like, it’s not clear how the one thing is abstract and the other is not)

    1. 1.1

      Distinguishing the relative “structuralness” of different forms of abstractions can be … well, that’s just say … “tricky.”

      And nobody has ever pointed that out before. Right, Dennis?

      1. 1.1.1

        “Let’s”, not “that’s”.

        Plainly we need more spell checking patents! Right?

Leave a Reply

Your email address will not be published. Required fields are marked *

You can click here to Subscribe without commenting

Add a picture