DirectPacket Research v. Polycom (Fed. Cir.) (nonprecedential)

In today’s DirectPacket Research v. Polycom case (non-precedential), the Federal Circuit struck down a patent under section 101. The technology involves using an intermediate protocol to translate one incompatible communication protocol to another (i.e., rather than translating directly between the two endpoint protocols, translate the first communication protocol to the intermediate protocol and then translate the intermediate protocol to the second communication protocol). The claims were drafted functionally.

In granting a motion for judgment on the pleadings, at Alice step one, the district court had reasoned by analogy that the claims were directed to the abstract idea of language translation. The Federal Circuit agreed: “We have consistently held that the ideas of ‘encoding and decoding … data’ and of ‘converting formats’ are abstract.” Although the patent owner argued that the claims improve the functioning of videoconferencing systems, the court noted that “the claim language makes no reference to videoconferencing systems, real-time communication, or the Internet.” And, the court held that the claims do not “recite a specific enough solution to make the asserted technological improvement concrete.”

At Alice step two, the patent owner argued that the use of an intermediate protocol was unconventional by transmitting data between incompatible endpoints in real time. The court responded by stating that the claims do not recite real-time transmission. The court also held that the abstract idea of translation includes the use of an intermediate protocol (“Adding one abstract idea … to another abstract idea … does not render the claim non-abstract,” citing to RecogniCorp). The court concluded by holding that the claims did not recite anything inventive: “We need look no further than the longstanding and well-known historical practice of employing a lingua franca to facilitate trade among various nations.” As a former software developer who implemented a number of communication systems in the 80s, I can attest that use of an intermediate protocol was known for decades.

The takeaways here are: (1) make sure your claims recite the improvement aspect of the invention (see e.g., Amdocs where a single word in the claim was enough); and (2) avoid functional claiming.