The Court Finds Three Pre-Alice Patents Prosecuted by Farjami & Farjami LLP Pass the Alice Test:
The U.S. District Court for the Central District of California recently found three patents belonging to Modern Telecom Systems LLC (“MTS”), and originally owned by Conexant Systems, Inc. (“Conexant”), not to be patent-ineligible under the Alice/Mayo framework. Modern Telecom Systems LLC v. Lenovo Inc., CV 14-1266-DOC (C.D. Cal. 2015).
At issue, among others, was U.S. Patent No. 6,570,932 (the “‘932 Patent”), which the parties referred to as the “Power Level Calculation Patent.” Also at issue were U.S. Patent No. 6,332,009 (the “‘009 Patent”) and U.S. Patent No. 6,504,886 (the “‘886 Patent”), which the parties referred to as the “Learning Sequence Patents.”
The three patents at issue had been prosecuted by Farjami & Farjami LLP for Conexant, a leading contributor to the ITU-T modem standards, such as the ITU-T V.90 and V.92 modem standards.
In a ruling on Lenovo’s motion for summary judgment of invalidity pursuant to 35 U.S.C. § 101, the Court applied the Alice/Mayo framework and found the three patents not to be patent-ineligible. The following is a summary of the Court’s analyses and ruling relating to the Power Level Calculation Patent and the Learning Sequence Patents.
1. Eligibility of the Power Level Calculation Patent
The Court examined a representative claim of the ‘932 Patent, i.e. independent claim 7, to determine whether the representative claim is patent-ineligible under the Alice/Mayo framework.
Independent claim 7 of the ‘932 Patent, in part, recites:
determining a probability of transmission of each signal point of said constellation;
calculating an average power of said signal points using a power formula based on said probability of transmission of each said signal point; and
comparing said average power with a transmit power limit.
Under the first step of the Alice/Mayo test, the Court inquired into whether the patent claim at issue is directed to a patent-ineligible concept, such as abstract ideas. Applying this test, the Court found the Power Level Calculation Patent to be directed to an abstract idea. The Court reasoned that “general ideas regarding communicating data and mathematical calculations through communication channels … have long been prevalent in our system and relate to fundamental concepts.”
Under step two of the Alice/Mayo test, the Court inquired into whether the patent at issue included “an ‘inventive concept’ that ‘is sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.’” Applying this test, the Court held that it “cannot conclude the claims simply instruct the practitioner to implement the abstract idea with routine, conventional activity.”
The Court held that the claims cover “only one ‘specific way’ to calculate an average power signal points” and that using “a power formula based on the probability of transmission of each signal point is not necessary to achieve the ‘932 Patent’s goal.” Because of reciting “‘a specific way’ to calculate an average power or signal points,” the Court reasoned that “the claims appear to constitute ‘more than a drafting effort designed to monopolize the abstract idea.’” As a result, the Court held that Lenovo did not meet “its burden of showing the ‘932 Patent is not sufficiently inventive, rendering it patent ineligible.”
2. Eligibility of the Learning Sequence Patents
The Court examined claim 1 of the ‘886 Patent, as a representative claim of the Learning Sequence Patents, to determine whether the representative claim is patent-ineligible, under the Alice/Mayo framework.
Independent claim 1 of the ‘886 Patent, in part, recites:
transmitting a first parameter specifying a number of segments in said learning sequence;
transmitting a second parameter specifying a sign pattern of each of said segments;
transmitting a third parameter specifying a training pattern of each of said segments, wherein said training pattern is indicative of an ordering of a reference symbol and a training symbol in each of said segments.
Considering step one of the Alice/Mayo test, the Court held that the Learning Sequence Patents are not directed to an abstract idea. The Court differentiated the Learning Sequence Patents from patents found to be ineligible by the Federal Circuit and the Supreme Court in the past. The Court stated that, unlike the Federal Circuit and Supreme Court precedents, the Learning Sequence Patents involve “an added degree of particularity including the flexible construction of a learning sequence by the transmitter in response to information provided by the receiver.”
Accordingly, the Court found that the concept in the Learning Sequence Patents cannot be simply “boiled down to, as Defendant asserts, the abstract idea of transmitting and receiving a series of parameters to assess the impairment of a communication channel.” Thus, the Court did not address the second step of the Alice/Mayo test, and held that Lenovo did not meet its burden to show that the claims of the ‘009 and ‘886 Patents are directed to an abstract idea.
Accordingly, the Court denied Lenovo’s motion for summary judgment of invalidity, under 35 U.S.C. § 101, and found the Power Level Calculation Patent and the Learning Sequence Patents not to be patent-ineligible.