NOTE: This disposition is nonprecedential.

United States Court of Appeals 

for the Federal Circuit ______________________

UNILOC USA, INC., UNILOC LUXEMBOURG S.A.,

UNILOC 2017 LLC,

Plaintiffs-Appellants

v.

ADP, LLC,

Defendant

BIG FISH GAMES, INC.,

Defendants-Appellees

______________________

2018-1132, 2018-1346

______________________

Appeals from the United States District Court for the 

Eastern District of Texas in Nos. 2:16-cv-00741-RWS, 2:16-

cv-00858-RWS, Judge Robert Schroeder, III.

--------------------------------------------------

UNILOC USA, INC., UNILOC LUXEMBOURG S.A.,

UNILOC 2017 LLC,

Plaintiffs-Appellants

v.

BITDEFENDER, INC., KASPERSKY LAB, INC.,

Defendants-Appellees
2 UNILOC USA, INC. v. ADP, LLC

______________________

2018-1448

______________________

Appeal from the United States District Court for the 

Eastern District of Texas in Nos. 2:16-cv-00393-RWS, 2:16-

cv-00394-RWS, 2:16-cv-00871-RWS, Judge Robert 

Schroeder, III.

______________________

Decided: May 24, 2019

______________________

JAMES J. FOSTER, Prince Lobel Tye LLP, Boston, MA, 

argued for plaintiffs-appellants. Also represented by PAUL 

J. HAYES, AARON JACOBS. 

 DOUGLAS FRED STEWART, Bracewell LLP, Seattle, WA, 

argued for defendant-appellee Big Fish Games, Inc. Also 

represented by DAVID JOHN BALL, New York, NY. 

 MENG XI, Susman Godfrey LLP, Los Angeles, CA, argued for defendant-appellee Bitdefender, Inc. Also represented by OLEG ELKHUNOVICH, KALPANA SRINIVASAN; 

SHAWN DANIEL BLACKBURN, Houston, TX. 

 CASEY ALLEN KNISER, Patterson Thuente Pedersen, 

PA, Minneapolis, MN, for defendant-appellee Kaspersky 

Lab, Inc. Also represented by ERIC H. CHADWICK. 

 ______________________

Before PROST, Chief Judge, LINN and MOORE, Circuit 

Judges.

LINN, Circuit Judge.

Uniloc USA, Inc. and Uniloc Luxembourg S.A. appeal 

the dismissal by the District Court for the Eastern District 
UNILOC USA, INC. v. ADP, LLC 3

of Texas of their complaints of infringement of U.S. Patents 

No. 7,069,293 (“’293 patent”), No. 6,324,578 (“’578 patent”), 

No. 6,510,466 (“’466 patent”) and No. 6,728,766 (“’766 patent”) in related cases against Appellees ADP, LLC; 

Kaspersky Lab, Inc.; Big Fish Games, Inc.; and Bitdefender, Inc. See Uniloc USA, Inc. v. AVG Techs. USA, Inc.

(“AVG Decision”), No. 2:16-cv-00393 (E.D. Tex. Mar. 28, 

2017) (dismissing, inter alia, claims against AVG, 

Kaspersky, and BitDefender); Uniloc USA, Inc. v. ADP, 

LLC (“ADP Decision”), No. 2:16-cv-00741 (E.D. Tex. Sep. 

28, 2017) (dismissing claims against ADP and Big Fish). 

Appellants also appeal the district court’s denial of Uniloc 

and ADP’s joint motion to vacate the ADP decision with respect to ADP only. Uniloc USA, Inc. v. ADP, LLC (“Vacatur 

Order”), No. 2:16-cv-741 (E.D. Tex. Nov. 20, 2017).

We reverse and remand the district court’s dismissal 

based on patent ineligibility of the invention claimed in the 

’293 and ’578 patents, and affirm the district court’s dismissal with respect to the ’466 and ’766 patents. We reverse and remand the district court’s order denying 

vacatur. Because we write for the parties, we rely on the 

district court’s exposition of the facts of the case.

I. Standing and Jurisdiction

A. Uniloc 2017 Assignment

Uniloc USA and Uniloc Luxembourg filed notices of appeal in Uniloc USA, Inc. v. Big Fish Games, Inc. on October 

27, 2017, and in Uniloc USA, Inc. v. Bitdefender LLC and 

Uniloc USA, Inc. v. Kaspersky Lab, Inc. on January 17, 

2018. On May 3, 2018, Uniloc USA and Uniloc Luxembourg transferred all their rights in and to the patents-insuit to Uniloc 2017. During oral argument on March 7, 

2019, and via letter on March 11, 2019, Uniloc USA and 

Uniloc Luxembourg moved to substitute Uniloc 2017 as the 

party in interest, or, in the alternative, to join Uniloc 2017. 

Appellees opposed.
4 UNILOC USA, INC. v. ADP, LLC

When Uniloc USA and Uniloc Luxembourg filed the notices of appeal that set our jurisdiction in these cases, they 

were indisputably the owners of the patents-in-suit. The 

transfer of the patent rights to Uniloc 2017 did not divest 

this court of jurisdiction or the ability to substitute or join 

a successor-in-interest. See, e.g., Minn. Min. & Mfg. Co. v. 

Eco Chem, Inc., 757 F.2d 1256, 1262 (Fed. Cir. 1985) (quoting Jones v. Village of Proctorville, Ohio, 303 F.2d 311, 313 

(6th Cir. 1962)) (substitution of a corporate successor-ininterest “did not defeat the Court’s jurisdiction once that 

jurisdiction has been invoked properly by” the original 

party); TOC Retail, Inc. v. Gulf Coast Oil Co. of Miss., Inc., 

No. 97-30969, 1999 WL 197149, at *12 (5th Cir. Mar. 25, 

1999) (unpublished) (explaining that Fed. R. App. P. Rule 

43(b) is based on Fed. R. Civ. P. 25, and “permits” the court 

to order substitution of parties “when there has been a 

transfer of interest”); Orexigen Therapeutics, Inc. v. Actavis 

Labs. FL, Inc., No. 2018-1221, slip op at *2 (Fed. Cir. Sep. 

19, 2018) (citing Beghin-Say Int’l v. Rasmussen, 733 F.2d 

1568, 1569 (Fed. Cir. 1984)) (“[T]his court has previously 

granted motions to substitute under Rule 43(b) when a 

party has acquired the patents during an appeal.”). See 

also Fed. R. App. P. 43(a) Advisory Committee Notes (citing Fed. R. Civ. P. 25(a)) (“The first three sentences describe a procedure similar to the rule on substitution in 

civil actions in the district court”); 6 Moore’s Federal Practice Civil § 25.30 (noting that Rule 25 is intended “to allow 

an action to continue unabated when an interest in a lawsuit changes hands, without initiating an entirely new 

suit”); 7A Wright & Miller, Fed. Practice & Proc. § 1958 

(noting that under Fed. R. Civ. P. 25, “[t]he court, if it sees 

fit, may allow the transferee [of an interest] to be substituted for the transferor” where an interest is transferred 

during the pendency of an action); Minn. Min. & Mfg., 757 

F.2d at 1263 (quoting In re Covington Grain Co., 638 F.2d 

1362, 1364 (5th Cir. 1981)) (“Rule 25(c) is not designed to 

create new relationships among parties to a suit but is 
UNILOC USA, INC. v. ADP, LLC 5

designed to allow the [original] action to continue unabated 

when an interest in the lawsuit changes hands.”).

Although there is no Rule in the Federal Rules of Appellate Procedure allowing joinder, the Supreme Court, the 

Fifth Circuit, and this court have allowed appellate joinder 

under Federal Rule of Civil Procedure 21 governing misjoinder and nonjoinder. Mullaney v. Anderson, 342 U.S. 

415, 417 (1952) (allowing joinder where it “merely puts the 

principal, the real party in interest, in the position of his 

avowed agent,” “it can in no wise embarrass the defendant,” and where earlier joinder would not have “in any way 

affected the course of the litigation”); Newman-Green, Inc. 

v. Alfonzo-Larrain, 490 U.S. 826, 833 (1989) (discussing

Mullaney and the appellate courts’ joinder powers); Banks 

Next friend of W.B. v. St. James Parish School Bd., No. 16-

31052, 2018 WL 6584305, at *4 (5th Cir. Dec. 12, 2018) 

(recognizing that a “court can sua sponte determine that a 

required party is missing, and it can add that party to the 

case” under Fed. R. Civ. P. 21); Mentor H/S, Inc. v. Medical 

Device Alliance, Inc., 244 F.3d 1365, 1373 (Fed. Cir. 2001)

(noting that appellate joinder may be available where it 

“would not prejudice the defendants”). 

Appellees argue that they would be prejudiced by Appellants’ approximately ten-month delay in filing the motion to join or substitute, and in failing to attach the full 

Asset Purchase Agreement among the Uniloc entities.

We conclude that joinder of Uniloc 2017 is in order. We 

find no merit in Appellees’ assertion that the transfer of 

rights to Uniloc 2017, the delay in informing the court, or 

the failure to attach the Asset Purchase Agreement prejudices Appellees or provides any “tactical advantage” to 

Uniloc. Joining Uniloc 2017 does not affect Appellees’ potential claims against Uniloc USA and Uniloc Luxembourg. 

An earlier motion filed immediately after the transfer (and 

after the notice of appeal) would not have changed the 

course of the litigation. Uniloc 2017 has not requested 
6 UNILOC USA, INC. v. ADP, LLC

additional time to file separate merits briefs or to take any 

additional measures to accommodate Uniloc 2017 as a separate party.1 Judicial efficiency—both with respect to this 

case and the several other disputes pending at the Court 

involving the Uniloc entities and at least some of the Appellees—strongly supports joinder here. See Mullaney, 342 

U.S. at 417 (in the circumstances of that case, noting that 

failure to join a party on appeal would “require the new 

plaintiffs to start over in the District Court [and] would entail needless waste and runs counter to effective judicial 

administration”). Moreover, joining Uniloc 2017 retains 

Uniloc USA and Uniloc Luxembourg as parties in this case 

and addresses Appellees’ concern that Uniloc 2017 may not 

have accepted Uniloc USA and Uniloc Luxembourg's liabilities along with the transfer of rights in the Asset Purchase 

Agreement.

Uniloc’s motion to join Uniloc 2017 is granted and the 

caption is amended accordingly.2

B. Uniloc USA, Inc. and Uniloc Luxembourg S.A.’s 

Alleged Breach of the IBM Agreement

By motion dated February 19, 2019, Appellees Bitdefender, Big Fish Games, Inc. and Kaspersky Lab, Inc. (collectively, “Movants”) argue that Uniloc lost standing with 

respect to Movants when Uniloc failed to indemnify ADP 

after IBM licensed ADP on October 20, 2017.

According to Movants, Uniloc’s failure to indemnify 

ADP automatically triggered Section 2.1(e) in the 2016 

Uniloc-IBM Agreement, which gave IBM the right to 

 

1 Counsel for Uniloc USA and Uniloc Luxembourg 

stated at oral argument that he also represents Uniloc 

2017.

2 Hereinafter, we use “Uniloc” to refer to the Uniloc 

entity with the rights in the patent at the time being discussed. 
UNILOC USA, INC. v. ADP, LLC 7

“license . . . without notice or accounting” to “third parties 

involved in any activities related to or arising from defense,

enforcement or licensing under any Assigned Patent.” Movants contend that Uniloc thus could no longer wholly exclude Appellees from practicing the patents, and that 

Uniloc thus lacked constitutional standing under WiAV Solutions LLC v. Motorola, Inc., 631 F.3d 1257 (Fed. Cir. 

2010). Relying on Moore v. Consolidated Edison Co. of NY, 

409 F.3d 506, 509 (2d Cir. 2005), Movants argue that because constitutional standing was lost, we must dismiss 

the appeal.

Movants’ argument is predicated on the existence of a 

breach of the 2016 Uniloc-IBM Agreement. But Movants 

have not shown that IBM, which is not a party to this litigation, considers Uniloc to be in breach or has asserted a 

right to sublicense and release Movants from liability relating to the patents-at-issue. Only ADP and Movants here 

have asserted a breach of the 2016 Uniloc-IBM Agreement. 

But neither ADP nor Movants are parties to the Agreement. 

Movants cite no other basis from which to assert a 

breach of the indemnification provision on behalf of IBM so 

as to activate the reversionary interest on which they base 

their jurisdictional argument. For example, they do not assert that they are intended beneficiaries of the contract. 

See Restatement (2d) of Contracts § 302 (defining intended 

and incidental beneficiaries) and Comment e (“[U]nless the 

third person is an intended beneficiary as here defined, no 

duty to him is created.”); U.C.C. § 3-301 (defining “[p]erson 

entitled to enforce’ an instrument” as “(i) the holder of the 

instrument, (ii) a nonholder in possession of the instrument who has the rights of a holder, or (iii) [in circumstances of a lost, destroyed or stolen instrument, or where 

the instrument was accepted by mistake]”). The breach of 

a contract potentially involves disputes of materiality, potential opportunities to cure, and available remedies, all of 

which are consummate contract issues to be resolved 
8 UNILOC USA, INC. v. ADP, LLC

between the parties. See, e.g., Restatement (2d) of Contract 

§§ 225 (effects of the non-occurrence of a condition); 229 

(excuse of a condition to avoid forfeiture); 241 (circumstances significant in determining whether a failure is material); 242 (circumstances significant in determining when 

remaining duties are discharged); 246 (effect of acceptance 

as excusing the non-occurrence of a condition). Movants 

have not pointed to any case where a non-beneficiary third 

party has asserted a breach of a contract that successfully 

triggered remedial provisions in the contract.

For the foregoing reasons, Movants motion to dismiss 

based on a loss of standing is denied.

C. Vacatur of the ADP Decision

Uniloc argues that the district court abused its discretion when it denied Uniloc’s motion to vacate the ADP judgment. Uniloc argues that unless the ADP judgment is 

vacated, third parties may argue that it creates issue preclusion. Uniloc contends this is unfair because it was denied the right to appeal the ADP judgment by the mooting 

of the Uniloc-ADP dispute. Appellees do not dispute that 

there is no longer a live dispute between Uniloc and ADP, 

but argue that mootness occurred due to Uniloc’s actions, 

making vacatur inappropriate.

Vacatur due to mootness is an equitable remedy. “The 

principal condition to which we have looked [in deciding 

whether vacatur is appropriate] is whether the party seeking relief from the judgment below caused the mootness by 

voluntary action.” U.S. Bancorp Mortg. Co. v. Bonner Mall 

P'ship, 513 U.S. 18, 24 (1994). See also United States v. 

Munsingwear, 340 U.S. 36, 39–40 (1950) (noting the “established practice of the Court in dealing with a civil case 

from a court in the federal system which has become moot 

while on its way here or pending our decision on the merits 

is to reverse or vacate the judgment below and remand 

with a direction to dismiss” when “review [of a judgment] 

was prevented through happenstance”). Where “mootness 
UNILOC USA, INC. v. ADP, LLC 9

occurred prior to the rendering of final judgment. . . vacatur and dismissal is automatic,” because mootness ordinarily undermines jurisdiction, and, under Fifth Circuit law, 

“we cannot leave undisturbed a decision that lacked jurisdiction.” Goldin v. Bartholow, 166 F.3d 710, 718 (5th Cir. 

1999).

We need not decide when the mootness here occurred. 

If it occurred, as Uniloc contends, on September 27, 2018, 

when Uniloc agreed to amend the Agreement with IBM to 

give IBM the right to license ADP, then the case was rendered moot prior to the district court’s decision (and judgment). If, on the other hand, the case was rendered moot 

when IBM licensed ADP on October 20, 2018 or later, then 

IBM and ADP—not Uniloc, the party seeking relief from 

the judgement—were the actors responsible for the mootness. In either event, review by Uniloc of the judgment 

against it was “prevented through happenstance.” U.S. 

Bancorp, 513 U.S. at 23 (quoting Munsingwear, 340 U.S. 

at 40 and Karcher v. May, 484 U.S. 72, 82 (1987)). Under 

the particular circumstances of this case, vacatur was in 

order and should have been granted as to ADP. 

We therefore reverse the district court’s Order denying 

Uniloc’s and ADP’s joint motion to vacate the ADP Decision

and remand with instructions to vacate the ADP Decision 

as to ADP only.

II. Patent Eligibility

We next turn to the substantive issue of patent eligibility with respect to each of the patents-in-suit.

“Eligibility under 35 U.S.C. § 101 is a question of law, 

based on underlying facts.” SAP Am., Inc. v. InvestPic, 

LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018). We analyze eligibility under the two-step Alice framework. Alice Corp. 

v. CLS Bank Int’l, 573 U.S. 208, 217 (2014). In step one, 

we must “determine whether the claims at issue are directed to a patent-ineligible concept.” Id. at 218. Under 
10 UNILOC USA, INC. v. ADP, LLC

this inquiry, we evaluate “the focus of the claimed advance 

over the prior art” to determine if the character of the claim 

as a whole, considered in light of the specification, is directed to excluded subject matter. Intellectual Ventures I 

LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1338 (Fed. 

Cir. 2017) (quoting Affinity Labs of Tex., LLC v. DIRECTV, 

LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016)); Enfish, LLC v. 

Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016).

In step two, we “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, 

573 U.S. at 218 (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 78–79 (2012)). Step two 

“looks more precisely at what the claim elements add” to 

determine if “they identify an inventive concept in the application of the ineligible matter to which . . . the claim is 

directed.” SAP, 898 F.3d at 1167 (internal quotation marks 

omitted). The abstract idea itself cannot supply the inventive concept, “no matter how groundbreaking the advance.” Id. at 1171.

A. ’293 Patent

Uniloc argues that the ’293 patent claims are directed 

to an “improvement over then-existing methods for centralized distribution of software” by allowing applications to be 

installed on client computers “from a single point for an entire managed network environment.” ’293 patent, col. 3, ll. 

34–39. Uniloc argues that the ’293 patent claims are directed to a particular way to achieve this advance by “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; and distributing the file packet 

to the target on-demand server to make the application 

program available for use by a user at a client.” Id. at 

col. 21, ll. 31–37 (Claim 1).
UNILOC USA, INC. v. ADP, LLC 11

Appellees argue that the claims are directed to the abstract idea of centralized distribution of software. According to Appellees, the file packet is not a specific way to 

accomplish the result because the specification shows that 

file packets performed an “inherent function[]” in existing 

off-the-shelf software products. Appellees’ Br. at 36 (citing 

’293 patent, col. 17, ll. 38). Appellees argue that the ’293 

patent claims are not directed to an improvement in network functionality, but rather merely provide centralized 

distribution of software by using conventional computer 

components as tools.

We agree with Uniloc that the 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. See, e.g., ’293 patent, Abstract (“[S]oftware distribution and installation may be provided from a single 

network management server.”); id. at col. 3, ll. 43–46 (“[I]t 

is an object of the present invention to provide methods, 

systems and computer program products for centralized 

management of application programs on a computer network.”). 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. 

See id. at col. 4, ll. 14–26; col. 5, ll. 33–58; col. 17, l. 55 – col. 

20, l. 64.

There is nothing in the record to suggest that such network architecture was so conventional as to exclude that 

architectural limitation in framing what the claims are “directed to.” The district court erred in discounting this key 

focus of the claims in part because of a misreading of the 

specification’s description of the management approach 

provided by Tivoli Systems, Inc. and referred to as the 
12 UNILOC USA, INC. v. ADP, LLC

Tivoli Management Environment (“TME”). The district 

court reasoned that the invention claimed in the ’293 patent is not directed to an improvement in the computer or 

network functionality because it uses “off-the shelf components,” “includes only generic activities of servers,” and 

“does not amount to more than a routine activity of commercial network management software as described by the 

specification itself.” ADP Decision at 14 (citing, inter alia, 

’293 patent, col. 17, ll. 20–54). The cited description in the 

specification, however, merely describes the implementation of the claimed invention using the TME. It does not 

indicate that the TME itself previously used the claimed 

file packets, nor does it support the Board’s conclusion that 

the use of file packets was conventional. See ’293 patent, 

col. 17, ll. 27–31 (“[T]he invention will be described with 

respect to its application and implementation using a specific network management approach provided by Tivoli 

Systems Inc. referred to as the Tivoli Management Environment.”). The district court failed to appreciate that the 

specification was describing the enhanced functionality 

provided to the prior art TME system by the use of the 

claimed file packets. It is undisputed that the addition of 

the file packet limitation during prosecution was the heart 

of the patent’s allowance.3 See J. App’x at 751 (examiner’s 

reasons for allowance). As noted, supra, the relevant question for purposes of step one is what is “the focus of the 

 

3 Uniloc argues that Appellants have waived their 

right to rely on the prosecution history by not raising it below. We disagree. There is no dispute that Uniloc maintained in the district court that the file packet was a focus 

of its invention. The prosecution history is part of the intrinsic record of the patent and is a “matter[] of public record.” Data Engine Techs. LLC. V. Google LLC, 906 F.3d 

999, 1008 n. 2 (Fed. Cir. 2018). It is thus subject to judicial 

notice and may be considered in our de novo review of the 

district court’s eligibility analysis. Id.
UNILOC USA, INC. v. ADP, LLC 13

claimed advance over the prior art.” Intellectual Ventures 

I, 850 F.3d at 1338. Here, that focus is on the use of the 

file packet configured to initiate registration of an application from an application server. This is not an abstract 

idea, but a particular improvement in the functioning of 

prior art application distribution networks. See Finjan, 

Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299, 1305 (Fed. Cir. 

2018) (“Here, the claims recite more than a mere result. 

Instead, they recite specific steps—generating a security 

profile that identifies suspicious code and linking it to a 

downloadable—that accomplish the desired result.”); 

McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 

1299, 1314 (Fed. Cir. 2016) (“We therefore look to whether 

the claims in these patents focus on a specific means or 

method that improves the relevant technology or are instead directed to a result or effect that itself is the abstract 

idea and merely invoke generic processes and machinery.”).

Because the claims in the ’293 patent are not directed 

to an abstract idea, we need not proceed to Alice step two. 

We reverse the district court’s dismissal with respect to the 

’293 patent claims and remand for further proceedings consistent with this opinion.

B. ’578 Patent

Claim 14 of the ’578 patent recites a network providing 

for the acquisition of both a “user set of the plurality of 

 

4 The district court considered Claim 1 of the ’578 patent as representative. Without explanation, Uniloc on appeal focuses on Claim 6. Because Uniloc has not shown 

that it objected to the district court’s consideration of Claim 

1 as representative of the claims of the ’578 patent, and 

does not explain why we should focus instead on Claim 6, 

we continue to analyze all the asserted claims in the ’578 

patent based on Claim 1.
14 UNILOC USA, INC. v. ADP, LLC

configurable preferences” and an “administrator set of the 

plurality of configurable preferences.” The claim requires

distribution of an application launcher program to the 

user, and the specification explains that the administrator 

preferences are stored on the server. ’578 patent, col. 3, 

ll.55–61. This positioning of the components allows the application to launch in “respons[e] to a request from one of 

the plurality of authorized users” pursuant to both sets of 

preferences. In other words, it allows for on-demand installation of two-tier customized applications.

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 ondemand installation of an application incorporating preferences from two different sources by adding the application 

manager and configuration manager as additions to each 

application. This is not an abstract idea under Alice step 

one. See Enfish, 822 F.3d at 1337–38 (holding patent eligible claims directed to “a specific improvement to computer 

functionality” that “functions differently than conventional 

database structures” and “achieves other benefits over conventional databases”). 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. The positioning of these components on the application server is akin to 

the inventive concept in Bascom Global Internet Servs., Inc. 

v. AT&T Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir. 

2016) (“The inventive concept described and claimed in the 

[patent-at-issue] is the installation of a filtering tool at a 

specific location, remote from the end-users, with customizable filtering features specific to each end user. This design gives the filtering tool both the benefits of a filter on a 

local computer and the benefits of a filter on the ISP 
UNILOC USA, INC. v. ADP, LLC 15

server.”). The positioning of these components on the application server together with the application launcher on 

the client computer allows customization by both the administrator and the user in such a way as the installation 

can proceed on-demand with both sets of preferences. 

There has been no showing or determination that such a 

network architecture was conventional.

Appellees argue that Uniloc has waived the argument 

that the steps and ordered combination of steps of the ’578 

patent were not conventional by not raising it to the district 

court. We disagree. In Uniloc’s opposition to Big Fish’s 

motion to dismiss, Uniloc argued that the claims of the ’578 

patent were patent eligible because, inter alia, the configurable preferences and the combination of connections and 

hardware and applications were unconventional. Plaintiffs’ Opposition to Defendant Big Fish Games, Inc.’s Motion to Dismiss for Failure to State a Claim, Uniloc USA, 

Inc. v. ADP, No. 2:16-cv-00741 (E.D. Tex. Dec. 1, 2016), 

ECF No. 97 at *8–10.

We thus conclude that the district court erred in holding that Claim 1 of the ’578 patent is patent ineligible. We 

reverse the district court’s grant of Appellees’ motion to dismiss with respect to the ’578 patent and remand for further 

proceedings consistent with this opinion.

C. ’466 Patent

In considering step one, the district court began its 

analysis by characterizing what the claims of the ’466 patent were directed to by merely repeating the language of 

the claims themselves. See AVG Decision, at 11. The district court more appropriately went on, however, to consider the “focus of the claimed advance over the prior art”

and “the character of the claim as a whole” in concluding

that the representative claim did not claim a particular 

way of programming or designing the software, and did not 

use computers in any non-conventional way. We agree 

with this conclusion and hold that the claims of the ’466 
16 UNILOC USA, INC. v. ADP, LLC

patent are directed to using a desktop interface to access 

an application server. This is an abstract idea.

Uniloc argues that the invention claimed in the ’466 

patent improves upon the prior art by allowing for “seamless integration of application access and session characteristics across heterogenous network.” ’466 patent, col. 3, 

ll. 21-25. Uniloc argues that it does this through a user 

desktop interface that includes “display regions associated 

with application programs for which the user is authorized.”

The “display regions” of the claimed desktop interface 

are simply icons that execute programs. Appellees alleged 

that the components are all conventional. Uniloc does not 

argue that the display icons or the user desktop incorporate 

any unconventional software or perform any unconventional functionality, see Appellant’s Opening Br. at 33; id.

at 4 (“A known approach to reducing software distribution 

problems was to use an application server to store and 

maintain applications that may then be transmitted over a 

network to clients using a software program.”), nor does 

Uniloc contend that using an icon to access an application 

is in any way unconventional. Moreover, the mere fact of 

using a desktop interface to access a conventional application server using conventional software is not an improvement in “network architecture” as Uniloc contends. The 

user desktop interface with display regions does not impart 

any materially different functionality to the network itself 

over a conventional application server. 

The claim is wholly functional and does not include the 

“specificity required to transform a claim from one claiming 

only a result to one claiming a way of achieving it.” See 

SAP, 898 F.3d at 1167. Moreover, the user-specificity of 

the available applications is merely an elementary form of 

customization, which we have previously held does not itself render claims non-abstract. See Intellectual Ventures 

I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1369–70 
UNILOC USA, INC. v. ADP, LLC 17

(Fed. Cir. 2015) (holding that tailoring a website display to 

a user’s personal characteristics is 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. See Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 

1350, 1354 (Fed. Cir. 2016) (distinguishing patent eligible 

improvements in computer functionality from patent ineligible improvements that use computers as tools). 

The claims of the ’466 patent also do not pass muster 

under step two. Uniloc merely argues that the ordered 

combination in the claims, “namely, the various software 

limitations and their interaction,” Appellant’s Opening Br. 

at 36, is an inventive concept. However, the “software limitations” are merely the conventional ones described above. 

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).

Uniloc argues that whether the components were conventional under step is a question of fact, and that the district court erred by deciding these fact issues against 

Uniloc as the non-moving party. See Berkheimer v. HP 

Inc., 881 F.3d 1360, 1364–65 (Fed. Cir. 2018). In particular, Uniloc argues that there is “zero evidence” of a userspecific desktop interface, where the server interface includes display regions for which the user is authorized, and 

where the server receives a selection from the interface and 

provides an instance of the application to the client for execution. We disagree. The district court adequately supported its conclusion by reference to the specification’s 

description of a prior art client-server environment. AVG 
18 UNILOC USA, INC. v. ADP, LLC

Decision at 15 (citing ’446 patent, col. 1, l. 57 – col. 2, l. 11). 

That section of the specification describes the prior art client-application server architecture, which necessarily includes a user interface, and allows the transmission of an 

application program from a server to a client for installation. Although that section explains that the prior art had 

certain limitations, like limiting the install to a particular 

client, the overcoming of those limitations is nowhere in 

the claim.

Uniloc also briefly argues that the prosecution history 

supports a lack of conventionality because the examiner 

did not find any references that taught the display region. 

Uniloc does not point to anything in particular in the prosecution history. The mere allowance of claims during prosecution does not preclude dismissal for patent ineligibility. 

Moreover, Uniloc is incorrect that an improvement in efficiency guarantees patent eligibility. The cases Uniloc cites 

are inapposite because the efficiency improvements in 

those cases arose out of claimed unique improvements in 

computer functionality, rather than improvements inherent in the use of conventional computer components as 

tools to perform conventional functions. See Core Wireless 

Licensing S.A.R.L. v. LG Elecs., Inc., 880 F.3d 1356, 1363 

(Fed. Cir. 2018) (holding patent eligible claims that created 

an efficiency improvement through a new user interface); 

Berkheimer, 881 F.3d at 1369 (holding that claims that fail 

to capture a purportedly unconventional form of data storage ineligible, while finding that other claims that do capture purportedly unconventional forms of data storage 

gave rise to a factual dispute underlying patent eligibility); 

Enfish, 822 F.3d at 1339 (noting that improvements in efficiency arising out of an invention that “functions differently than conventional” structures “bolster[s]” the 

conclusion that the claims are directed to technological improvements rather than abstract ideas).

We thus affirm the district court’s conclusion that representative claim 1 of the ’466 patent is not patent eligible.
UNILOC USA, INC. v. ADP, LLC 19

D. ’766 Patent

Uniloc argues that the ’766 patent claims a network architecture that enables user-specific license management 

over a network, and that this functionality contrasts with 

prior art licensing on a client/workstation basis. Uniloc argues that this is a particular improvement in computer 

functionality—changing the network architecture by maintaining license management policy information at a license 

management server so that users can move from client to 

client and maintain their permissions.

Representative Claim 1 is directed to a license management method that indicates a user’s authorization to access 

an application. The task in claim 1 is simply to “provid[e] 

an unavailability indication . . . or an availability indication,” based on “at least one of a user identity based policy, 

an administrator policy override definition or a user policy 

override definition.” This is an abstract idea.

Claim 1 does “not go beyond requiring the collection, 

analysis, and display of available information.” See Elec. 

Pwr. Grp., 830 F.3d at 1351. The information being collected is who the user is, tested against the user identity 

policy, with a resulting display of authorization. This is not 

an improvement in network architecture—it is the use of a 

computer as a tool to process information. Uniloc’s attempt 

to reframe the claimed improvement to allow client-independent user-specific application access must fail; neither 

that functionality nor how that can be achieved is in the 

claims. Finally, as noted above, we have held that incorporating user-customization when using the computer as a 

tool does not render claims patent eligible. See id. at 1354; 

Intellectual Ventures I, 792 F.3d at 1369–70.

Uniloc argues that the prosecution history supports its 

position that the claim is directed to an improvement in 

computer technology because Uniloc argued to the examiner that the claim was not obvious over the prior art because its claims associated the license with a user, whereas 
20 UNILOC USA, INC. v. ADP, LLC

the prior art associated the license with a computer. 

Uniloc’s argument is inapposite. Uniloc does not explain 

how its argument to the examiner for non-obviousness informs the step one directed-to inquiry here. Moreover, as 

we noted above, a license to a user is not materially different than a license to a computer for purposes of eligibility 

of this claim—the claim is nevertheless directed to the license management method which merely provides information to the user about the user’s authorization. 

The claims also contain no inventive concept under 

step two. Nothing about the licensing policy, the application server, or the notification of authorization is asserted 

as unique or non-conventional from the way that those 

components ordinarily function. The licensing policy determines authorization to an application like a conventional 

licensing policy, the server stores and delivers the authorization information like a conventional server, and the notification notifies the user in a conventional way.

Uniloc is incorrect that the real-time availability of authorization information improves efficiency and is an inventive concept. Such real-time availability of information 

is a staple of a conventional network. Intellectual Ventures 

I, 792 F.3d at 1367 (noting that improvements in “speed or 

efficiency inherent with applying the abstract idea on a 

computer” do not provide an inventive step). Similarly, 

even if a “user identify based policy” is a new source or type 

of information, it is still abstract information that, as such, 

does not contribute to any inventive concept.

We thus affirm the district court’s conclusion that representative claim 1 of the ’766 patent is patent ineligible.

AFFIRMED-IN-PART, REVERSED-IN-PART AND 

REMANDED

COSTS

No costs.