Mentone Options LLC v. Digi Worldwide Inc. (Fed. Cir. 2021)

By Michael Borella

Federal Circuit SealMentone sued Digi for alleged infringement of Mentone’s U.S. Patent No. 6,952,413.  The U.S. District Courtroom for the District of Delaware discovered the claims of the patent to be ineligible underneath 35 U.S.C. § 101.  Mentone appealed.

The invention of the ‘413 patent is directed to enhancements within the allocation of wi-fi sources for wi-fi packet information channels (PDCHs).[1]  Within the related know-how, the wi-fi air interface sources are shared utilizing a way known as time-division multiplexing.  Every PDCH is represented by a repeating set of paired time slots within the uplink and downlink instructions.  The uplinks carry info from a cellular machine to a base station and the downlinks carry info from the bottom station to a number of cellular units.

Fig. 1
Determine 1 of the ‘413 patent, proven above, offers an instance, with time flowing from left to proper.  Every uplink and downlink consists of repeating frames of 8 slots, numbered 0 to 7.  Thus, Determine 1 depicts two frames of slots in each the uplink and downlink instructions.

A PDCH is the set of slots, from each the uplink and the downlink, which have the identical quantity.  Thus, PDCH 0 consists of all slots numbered 0, PDCH 1 consists of all slots numbered 1, and so forth.  These PDCHs are shared amongst the cellular units that talk by means of the bottom station.  Thus, a mechanism to allocate them dynamically is required to permit for environment friendly packet information communication, which is commonly bursty.  A selected cellular machine could also be allotted n contiguous PDCHs at any given level (the place n is not more than 8 on this instance).

To facilitate uplink communication, the bottom station transmits an uplink standing flag (USF) in a downlink PDCH slot.  The USF identifies a specific cellular machine and informs the cellular machine that it could transmit in as much as n uplink slots within the subsequent body, starting with the uplink slot of the identical PDCH.  In different phrases, if n=4 and a USF in downlink slot 2 identifies the cellular machine, then the cellular machine could transmit in uplink slots 2, 3, 4, and 5 of the following body.

Fig. 2
For instance, in Determine 2 of the ‘413 patent, n=4 and the USFs in every downlink slot 0 signifies {that a} specific cellular machine could transmit in uplink slots 0, 1, 2, and three (indicated by the shaded uplink slots).  Thus, there’s a fastened relationship between the downlink slot wherein a USF is acquired and the primary uplink slot wherein the cellular machine can transmit.

Fig. 3
Such a system is restricted by the flexibility of the cellular machine to modify between receiving and transmitting modes.  Particularly, a cellular machine won’t have the ability to obtain a USF in a downlink slot that instantly follows an uplink slot wherein the cellular machine was transmitting.  Determine 3 of the ‘413 patent illustrates this drawback — the second (rightmost) USF instantly follows the cellular machine’s final uplink transmission of the primary body.  The cellular machine won’t have the ability to transition rapidly sufficient from transmitting mode to receiving mode so as to have the ability to obtain this USF.

The ‘413 patent purports to beat the constraints of those standardized strategies by permitting the primary uplink slot related to a USF to be “shifted” so that there’s sufficient time between downlink and uplink slots assigned to the cellular machine for the cellular machine to vary its mode.  The ensuing benefits, as said within the patent’s specification, contain elimination of inflexible slot task restrictions thereby permitting elevated information transmission charges.

Fig. 4
Making use of the invention to the association of Determine 3 might outcome within the association of Determine 4, wherein the USF slots and the transmission slots are no less than one slot aside from each other.

Impartial declare 5 of the ‘413 patent was at situation, and recites:

A a number of entry communication technique in a cellular station, comprising the steps of:
    receiving an task of no less than a primary PDCH (packet information channel) and a second PDCH;
    monitoring an assigned PDCH to detect a USF; and
    transmitting on an assigned PDCH similar to the USF,
    whereby (i) if shifted USF operation isn’t used then a primary assigned PDCH is monitored to detect a USF similar to the primary assigned PDCH and (ii) if the shifted USF operation is used then a second assigned PDCH is monitored to detect the USF similar to the primary assigned PDCH and a USF similar to the second assigned PDCH.

Digi moved to dismiss declare 5 and the opposite asserted claims underneath Rule 12(b)(6) on grounds of patent-ineligibility.

In Alice Corp. v. CLS Financial institution Int’l, the Supreme Courtroom set forth a two-part take a look at to find out whether or not claims are directed to patent-eligible subject material underneath § 101.  One should first resolve whether or not the declare at hand entails a judicially-excluded regulation of nature, a pure phenomenon, or an summary thought.  In that case, then one should additional resolve whether or not any component or mixture of parts within the declare is enough to make sure that the declare consists of an creative idea amounting to considerably greater than the judicial exclusion.  However parts or combos of parts which might be well-understood, routine, and traditional is not going to carry the declare over the § 101 hurdle.  Whereas this inquiry is mostly carried out as a matter of regulation, factual points can come into play when figuring out whether or not one thing is well-understood, routine, and traditional.

Making use of the Alice take a look at, the Courtroom quickly decided that half one was met.  Quite than an summary thought, the Courtroom discovered that declare 5 “is directed to a patent-eligible enchancment to laptop performance, particularly allowing extra multislot configurations for sure lessons of cellular stations utilizing prolonged bandwidth allocation.  Additional, “[i]t provides this functionality by means of utilizing a shifted USF that breaks the fastened relationship within the timing of downlink allocation signaling (i.e., receipt of a USF on a timeslot) and subsequent uplink transmission.”

In coming to this conclusion, the Courtroom leaned closely on the teachings of the specification with regard to the enhancements over prior artwork strategies.  Significantly, the variations between the prior artwork association of Determine 3 and that of Determine 4, in addition to the ensuing technical benefits, had been emphasised.  Certainly, the Courtroom emphasised that the time period “shifted USF” was possible coined by the inventor and due to this fact one should look to the specification so as to have the ability to perceive its which means.

Within the District Courtroom, Digi had contended that declare 5 lacked specificity and that it ought to have recited “when, how, or why one would . . . shift the USF or how a shifted USF would particularly enhance the functioning of a previous artwork system.”  However the Federal Circuit dismissed this notion, indicating that the claimed shifted USF operation was specific sufficient and that the specification contained an in depth circulate chart supporting the claimed operation.  Additional, the Courtroom famous that an express recital of the development supplied by the invention was not essential.

The District Courtroom had discovered that declare 5 was directed to the summary thought of “receiving a USF and transmitting information throughout the suitable timeslots.”  However the Federal Circuit shot down this interpretation, pointing to how the District Courtroom had relied on “a high-level description of how USFs function in cellular stations utilizing prolonged bandwidth allocation typically” and was due to this fact improperly “untethered to the invention as claimed.”

Concluding that declare 5 was not summary, the Federal Circuit reversed the District Courtroom’s dismissal.

[1] The opinion doesn’t do a improbable job of describing the underlying know-how.  A clearer clarification is discovered within the ‘413 patent, on which this description was based mostly.

Mentone Options LLC v. Digi Worldwide Inc. (Fed. Cir. 2021)
Nonprecedential disposition
Panel: Chief Decide Moore and Circuit Judges Lourie and Dyk
Opinion by Chief Decide Moore

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