A claim to how a flag assigns timeslots is an improvement to the communication system, not an abstract allocation

2021-11-15Fed. Cir.

Mentone Solutions LLC v. Digi International Inc., Nos. 2021-1202, 2021-1203 (Fed. Cir. Nov. 15, 2021) (nonprecedential) (Moore, C.J., joined by Lourie and Dyk, JJ.), reversing dismissals under Rule 12(b)(6) by the United States District Court for the District of Delaware, Nos. 1:20-cv-00280-LPS and 1:20-cv-00281-LPS (Stark, J.)

United States Patent No. 6,952,413 concerns dynamic resource allocation in a general packet radio service network. Representative claim 5 recites a multiple access communication method in a mobile station comprising receiving an assignment of at least a first and a second packet data channel, monitoring an assigned channel to detect an uplink status flag, or USF, and, if the shifted USF operation is used, monitoring a second assigned channel, with transmission on the timeslots so indicated. The district court dismissed the infringement suits against Digi International and Elo Touch Solutions under Rule 12(b)(6), characterizing the claim as directed to receiving a USF and transmitting data during the appropriate timeslots. The Federal Circuit reversed in a nonprecedential opinion by Chief Judge Moore. The court held that shifted USF appears to be a coined term to be read in light of the specification, which describes the restriction in prior art multislot configurations and the shifted USF solution, and that claim 5 is directed to a patent-eligible improvement to computer functionality, namely permitting additional multislot configurations for certain classes of mobile stations using extended bandwidth allocation. The district court's description was untethered to the invention as claimed. The court stated that claims need not articulate the advantages of the claimed combinations to be eligible. Because the claims passed step one, step two was not reached.

What it changesA method of allocating resources is the kind of claim that draws an abstract idea motion on sight, and this one survived because it recited the mechanism: which channel is monitored, what flag is detected, and what the flag does to the timeslot assignment. Inference serving, request routing, batching and scheduling claims for artificial intelligence systems should be drafted at the same level. The claim should name the signal, the condition on which the system acts, and the specific change in behavior, and the specification should explain the prior configuration and what the new mechanism permits that the old one could not. Two further points follow. A coined term for the mechanism is useful when the specification defines it, because the court read the claim through that definition. And the advantage need not be in the claim, which leaves the drafter free to keep the claim to the mechanism and put the benefit in the specification. The decision is nonprecedential.

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Burbage Law is the practice of Jon Burbage, a registered patent attorney. 342 United States patents have issued from applications he wrote; the full list is on the Patents page. More about Jon Burbage.

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