United States Court of Appeals 

for the Federal Circuit ______________________

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

UNILOC 2017 LLC,

Plaintiffs-Appellants

v.

LG ELECTRONICS USA, INC., LG ELECTRONICS

MOBILECOMM U.S.A., INC., LG ELECTRONICS, 

INC.,

Defendants-Appellees

______________________

2019-1835

______________________

Appeal from the United States District Court for the 

Northern District of California in No. 5:18-cv-06738-LHK, 

Judge Lucy H. Koh.

______________________

Decided: April 30, 2020

______________________

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

argued for plaintiffs-appellants. 

 J. MICHAEL JAKES, Finnegan, Henderson, Farabow, 

Garrett & Dunner, LLP, Washington, DC, argued for defendants-appellees. Also represented by JOSEPH PRESTON 

LONG. 

 ______________________

Case: 19-1835 Document: 35 Page: 1 Filed: 04/30/2020
2 UNILOC USA, INC. v. LG ELECTRONICS USA, INC.

Before MOORE, REYNA, and TARANTO, Circuit Judges.

MOORE, Circuit Judge.

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 under Fed. R. Civ. P. 12(b)(6), arguing the claims of the ’049 

patent are ineligible under 35 U.S.C. § 101. 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. Uniloc USA Inc. v. LG Elecs. USA Inc., 

379 F. Supp. 3d 974, 1000 (N.D. Cal. 2019). Because we 

hold the claims are not directed to ineligible subject matter 

under § 101, we reverse and remand.

BACKGROUND

The ’049 patent is directed to a communication system

comprising a primary station (e.g., a base station) and at 

least one secondary station (e.g., a computer mouse or keyboard). ’049 patent at Abstract; id. at 1:28–31, 3:31–34. In 

conventional systems, such as Bluetooth networks,1 two 

devices that share a common communication channel form 

ad hoc networks known as “piconets.” Id. at 1:19–21. Joining a piconet requires the completion of two sets of procedures, namely an “inquiry” procedure and a “page” 

procedure. Id. at 1:54–55. The inquiry procedure allows a 

primary station to identify secondary stations and it allows 

secondary stations to issue a request to join the piconet. Id.

1 Although the claimed invention is described with 

particular reference to a Bluetooth system, it is also applicable to other communication systems. ’049 patent at 1:6–

8.

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at 1:56–57. The page procedure in turn allows a primary 

station to invite secondary stations to join the piconet. Id.

at 1:57–58. Together, it can take several tens of seconds to 

complete the inquiry and page procedures so that a device 

joins a piconet and is able to transfer user input to the primary station. Id. at 1:58–61. Once a piconet is formed, the 

primary station “polls” secondary stations to determine 

whether they have data to share over the communication 

channel. 

Because many secondary stations are battery-operated, secondary stations may enter a “park” mode and 

cease active communications with the primary station to 

conserve power. Id. at 1:43–45, 1:62–66. A secondary station in parked mode remains synchronized with the primary station, but it must be polled before it can leave park 

mode and actively communicate with the primary station. 

Id. at 1:43–51. In conventional systems, primary stations 

alternate between sending inquiry messages to identify 

new secondary stations and polling secondary stations already connected to the piconet, including parked devices,

to determine whether they have information to transmit. 

Therefore, under the conventional polling process, a secondary station could experience delays of tens of seconds 

both in initially joining a piconet and in transmitting data 

after entering park mode.

The specification explains that the invention improves

conventional communication systems by including a data 

field for polling as part of the inquiry message, thereby allowing primary stations to send inquiry messages and conduct polling simultaneously. Id. at Abstract. The claimed 

invention therefore enables “a rapid response time without 

the need for a permanently active communication link” between a parked secondary station and the primary station. 

Id. at Abstract. Claim 2 of the ’049 patent, which the district court treated as representative, recites: 

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4 UNILOC USA, INC. v. LG ELECTRONICS USA, INC.

2. A primary station for use in a communications 

system comprising at least one secondary station, wherein means are provided

for broadcasting a series of inquiry messages, each in the form of a plurality of 

predetermined data fields arranged according 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 moved to dismiss Uniloc’s Second Amended Complaint under Fed. R. Civ. P. 12(b)(6), arguing the claims of 

the ’049 patent are directed to ineligible subject matter under § 101. Treating claim 2 of the ’049 patent as representative, the district court granted LG’s motion. The 

district court held that the asserted claims are directed to 

the abstract idea of “additional polling in a wireless communication system,” analogizing the asserted claims to 

data manipulation claims we held ineligible in Two-Way 

Media Ltd. v. Comcast Cable Communications, LLC, 874 

F.3d 1329 (Fed. Cir. 2017) and Digitech Image Technologies, LLC v. Electronics for Imaging, Inc., 758 F.3d 1344 

(Fed. Cir. 2014). Uniloc USA Inc., 379 F. Supp. 3d at 990. 

The district court further determined that the claims fail 

to recite an “inventive concept sufficient to save the 

claim[s].” Id. at 1000. The district court entered judgment 

in favor of LG. J.A. 1. Uniloc timely appeals. We have 

jurisdiction under 28 U.S.C. § 1295(a)(1).

DISCUSSION

We review a district court’s Rule 12(b)(6) dismissal under the law of the regional circuit, here the Ninth Circuit. 

Aatrix Software, Inc. v. Green Shades Software, Inc., 882 

F.3d 1121, 1124 (Fed. Cir. 2018). The Ninth Circuit reviews such dismissals de novo, construing all allegations of 

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material fact in the light most favorable to the nonmoving 

party. Livid Holdings Ltd. v. Salomon Smith Barney, Inc., 

416 F.3d 940, 946 (9th Cir. 2005). Patent eligibility under 

35 U.S.C. § 101 is a question of law, based on underlying 

factual findings. SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 

1161, 1166 (Fed. Cir. 2018). It may be resolved on a Rule 

12(b)(6) motion “when there are no factual allegations that,

taken as true, prevent resolving the eligibility as a matter 

of law.” Aatrix, 882 F.3d at 1125. 

Section 101 provides that “[w]hoever invents or discovers any new and useful process, machine, manufacture, or 

composition of matter, or any new and useful improvement 

thereof,” may obtain a patent. 35 U.S.C. § 101. The Supreme Court has held that “[l]aws of nature, natural phenomena, and abstract ideas are not patent eligible.” Alice 

Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014) (quoting 

Assoc. for Molecular Pathology v. Myriad Genetics, Inc., 569 

U.S. 576, 589 (2013)). We follow the Supreme Court’s twostep framework for determining patent eligibility under 

§ 101. First, we determine whether the claims are directed 

to a “patent-ineligible concept,” such as an abstract idea. 

Id. at 217. If so, 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.” Id.

(quoting Mayo Collaborative Servs. v. Prometheus Labs., 

Inc., 566 U.S. 66, 78–79 (2012)). 

At Alice step one, we determine whether the claims are 

directed to an abstract idea. Alice, 573 U.S. at 217. In 

cases involving software innovations, this inquiry often 

turns on whether the claims focus on specific asserted improvements in computer capabilities or instead on a process or system that qualifies an abstract idea for which 

computers are invoked merely as a tool. Customedia 

Techs., LLC v. DISH Network Corp., 951 F.3d 1359, 1364 

(Fed. Cir. 2020) (citing Finjan, Inc. v. Blue Coat Systems, 

Inc., 879 F.3d 1299, 1303 (Fed. Cir. 2018)). We have 

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routinely held software claims patent eligible under Alice 

step one when they are directed to improvements to the 

functionality of a computer or network platform itself. 

In DDR Holdings, LLC v. Hotels.com, L.P., for example, we held patent eligible claims directed to a system for 

generating a hybrid web page that maintained the “look 

and feel” of a host website. 773 F.3d 1245, 1257–59 (Fed. 

Cir. 2014). We emphasized that in “overcom[ing] a problem 

specifically arising in the realm of computer networks,” the 

claimed invention changed the normal operation of the

computer network itself and was “necessarily rooted in 

computer technology.” Id. at 1257–58. Similarly, in Enfish, LLC v. Microsoft Corp., we held patent eligible claims 

directed to a self-referential database that improved the 

way computers operated and handled data, allowing the 

more efficient launching and adaptation of databases. 822 

F.3d 1327, 1336–39 (Fed. Cir. 2016). And in Visual 

Memory LLC v. NVIDIA Corp., we held patent eligible 

claims “focus[ed] on a ‘specific asserted improvement in 

computer capabilities,’” namely the accommodation of different types of processors without compromising performance. 867 F.3d 1253, 1259–60 (Fed. Cir. 2017). In 

holding the claims patent eligible, we noted that the claims 

were not directed to categorical data storage but rather 

were limited to certain types of data to be stored. Id. 

In Ancora Technologies, Inc. v. HTC America, Inc., we 

held patent eligible claims directed to a non-abstract improvement to computer security. 908 F.3d 1343, 1347–49

(Fed. Cir. 2018). We determined the claims addressed the 

“vulnerability of license-authorization software to hacking” 

and were thus “directed to a solution to a computer-functionality problem.” Id. at 1349; see also Finjan, 879 F.3d at

1304–06 (holding that claims to a “behavior-based virus 

scan” provided greater computer security and were thus directed to a patent-eligible improvement in computer functionality). In Data Engine Technologies LLC v. Google 

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LLC, we held patent eligible claims reciting “a specific 

method for navigating through three-dimensional electronic spreadsheets” because the claimed invention “improv[ed] computers’ functionality as a tool able to instantly 

access all parts of complex three-dimensional electronic 

spreadsheets.” 906 F.3d 999, 1007–08 (Fed. Cir. 2018). 

And in Core Wireless Licensing S.A.R.L. v. LG Electronics, 

Inc., we held patent eligible claims directed to an improved 

user interface that enabled users to more quickly access

stored data and programs in small-screen electronics. 880 

F.3d 1356, 1359–63 (Fed. Cir. 2018). We determined that 

the claimed invention in Core Wireless “improve[d] the efficiency of using the electronic device by bringing together 

a limited list of common functions and commonly accessed 

stored data, which can be accessed directly from the main 

menu.” Id. at 1363. We therefore held that “the claims 

[we]re directed to an improvement in the functioning of 

computers, particularly those with small screens.” Id.

In accordance with this precedent, we hold the claims 

at issue are directed to a patent-eligible improvement to 

computer functionality, namely the reduction of latency experienced by parked secondary stations in communication 

systems. 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.” ’049 patent at Claim 2. The additional data field enables a primary station to simultaneously send inquiry messages and poll parked secondary 

stations. Id. at Abstract. The claimed invention therefore

eliminates or reduces the delay present in conventional 

systems where the primary station alternates between 

polling and sending inquiry messages. See, e.g., id. at 2:8–

15, 6:55–60. Therefore, like the claims in DDR, the claimed 

invention changes the normal operation of the communication system itself to “overcome a problem specifically arising in the realm of computer networks.” See 773 F.3d at 

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8 UNILOC USA, INC. v. LG ELECTRONICS USA, INC.

1257–58. In doing so, the claimed invention, like the improvement in computer memory we held patent eligible in 

Visual Memory, enables the communication system to accommodate additional devices, such as battery-operated 

secondary stations, without compromising performance. 

See 867 F.3d at 1258–60. 

LG does not dispute that reducing latency experienced 

by parked secondary stations in conventional communication systems is a patent-eligible improvement to computer 

functionality. Instead, it contends that the claims are not 

sufficiently directed to this purported improvement. It argues the claims merely recite the observation that conventional inquiry messages can accommodate conventional 

polling “using result-based functional language” and generic Bluetooth components. LG therefore contends that 

the district court correctly analogized to the abstract “data 

manipulation” claims we held ineligible in prior cases. We

do not agree. 

The district court’s reliance on our prior cases is misplaced. In Digitech, the claims recited “a process of taking 

two data sets and combining them into a single data set,”

called a device profile. 758 F.3d at 1351. Although the 

claimed device profile could purportedly be used in reducing image distortion, merely generating the claimed device 

profile did not alone reduce image distortion or otherwise

improve image processing. Id. at 1347–48. The claims 

were not directed to a patent-eligible technological improvement but rather recited “the ineligible abstract idea 

of gathering and combining data that does not require input from a physical device.” Id. at 1351.

The claims we held ineligible in Two-Way Media similarly failed to concretely capture any improvement in computer functionality. In Two-Way Media, the claims recited

a method of transmitting packets of information over a 

communications network comprising: converting information into streams of digital packets; routing the streams 

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to users; controlling the routing; and monitoring the reception of packets by the users. 874 F.3d at 1334. Two-Way 

Media argued that the claims solved data transmission 

problems, including load management and bottlenecking,

but the claimed method was not directed to those improvements. Id. at 1336–37. We therefore held the claims ineligible because they merely recited a series of abstract steps 

(“converting,” “routing,” “controlling,” “monitoring,” and 

“accumulating records”) using “result-based functional language” without the means for achieving any purported 

technological improvement. Id. at 1337. 

The claims at issue do not merely recite generalized 

steps to be performed on a computer using conventional 

computer activity. Instead, they are directed to “adding to 

each inquiry message prior to transmission an additional data field for polling at least one secondary station.” See, e.g., ’049 patent at Claim 2. And this change 

in the manner of transmitting data results in reduced 

response time by peripheral devices which are part of 

the claimed system. As the patent explains, for secondary stations joining a piconet in the prior art systems, “it 

could take half a minute or more from the time a user 

moves a mouse to a cursor moving on a screen.” Id. at 2:10–

12. Because polling was “suspended during this cycle, for 

up to 10.24 seconds at a time,” parked secondary stations 

in prior art systems could experience similar delays after 

each period of inactivity. Id. at 2:13–16. The claimed addition of a data field for polling to the inquiry message significantly reduces the response time, enabling secondary 

stations to respond a fraction of a second later. See, e.g., 

’049 patent at 5:36–41. Even LG concedes that this reduction in latency “is the very reason for polling during the 

inquiry process in the first place.” Appellees’ Br. 54 (citing, 

e.g., J.A. 1375–77, 1394). To the extent LG argues that 

the claims themselves must expressly mention the reduced latency achieved by the claimed system, LG is in 

error. Claims need not articulate the advantages of the 

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10 UNILOC USA, INC. v. LG ELECTRONICS USA, INC.

claimed combinations to be eligible. We conclude that 

the claims at issue are not directed to the abstract idea 

of performing additional polling in wireless communication 

systems or performing additional polling using inquiry 

messages. These claims are directed to a specific asserted 

improvement to the functionality of the communication 

system itself. 

The claimed invention’s compatibility with conventional communication systems does not render it abstract. 

Nor does the fact that the improvement is not defined by 

reference to “physical” components. Enfish, 822 F.3d at 

1339. “To hold otherwise risks resurrecting a bright-line 

machine-or-transformation test, or creating a categorical 

ban on software patents.” Id. (citations omitted). Our precedent is clear that software can make patent-eligible improvements to computer technology, and related claims are 

eligible as long as they are directed to non-abstract improvements to the functionality of a computer or network 

platform itself. See Customedia Techs., 951 F.3d at 1364 

(collecting cases). The claims of the ’049 patent recite a 

specific improvement in the functionality of the communication system itself, namely the reduction of latency experienced by parked secondary stations. This is sufficient to 

pass muster under Alice step one. Because we hold the 

claims patent eligible under Alice step one, we need not 

proceed to the second step of Alice. Visual Memory, 867 

F.3d at 1262. 

CONCLUSION

We have considered LG’s remaining arguments and 

find them unpersuasive. For the foregoing reasons, we conclude that the claims of the ’049 patent are not directed to 

patent-ineligible subject matter under § 101 and therefore

reverse and remand the district court’s decision.

REVERSED AND REMANDED

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