Case: 19-2072 Document: 40 Page: 1 Filed: 04/07/2020
NOTE: This disposition is nonprecedential.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.
SAMSUNG ELECTRONICS AMERICA, INC.,
SAMSUNG ELECTRONICS CO., LTD.,
Defendants-Appellees
______________________
2019-2072
______________________
Appeal from the United States District Court for the
Eastern District of Texas in No. 2:18-cv-00042-JRG-RSP,
Judge J. Rodney Gilstrap.
______________________
Decided: April 7, 2020
______________________
JAMES J. FOSTER, Prince Lobel Tye LLP, Boston, MA,
for plaintiffs-appellants.
ALLAN A. KASSENOFF, Greenberg Traurig LLP, New
York, NY, for defendants-appellees. Also represented by
RICHARD A. EDLIN.
______________________
Case: 19-2072 Document: 40 Page: 2 Filed: 04/07/2020
2 UNILOC USA, INC. v. SAMSUNG ELECTRONICS AMERICA
Before MOORE, CLEVENGER, and CHEN, Circuit Judges.
MOORE, Circuit Judge.
Uniloc USA, Uniloc Luxembourg and Uniloc 2017 (col-
lectively, Uniloc) appeal the United States District Court
for the Eastern District of Texas’ judgment of invalidity as
to claim 18 of
U.S. Patent No. 6,868,079. Because the dis-
trict court did not err in holding claim 18 indefinite, we af-
firm.
BACKGROUND
Uniloc Luxembourg, S.A. and Uniloc USA, Inc. sued
Samsung Electronics Co., Ltd. and Samsung Electronics
America, Inc. (collectively, Samsung), alleging infringe-
ment of claims of the ’079 patent. 1 The ’079 patent is di-
rected to a radio communication system in which a
secondary station (e.g., a mobile phone) requests services
from a primary station (e.g., a cellular base station). ’079
patent at Abstract;
id. at 1:56–67. According to the speci-
fication, a secondary station communicates with a primary
station over an uplink communication channel divided into
frames, where each secondary station registered with the
primary station is allocated a time slot within each frame.
Id. at 1:43–46. In conventional signaling schemes, a sec-
ondary station would use that time slot to make a request
for services to a base station and then wait for an acknowl-
edgement from the base station.
Id. at 3:42–45. If the sec-
ondary station did not receive an acknowledgment within
a predetermined period of time, the secondary station
scheduled another request.
Id. at 3:45–48. The claimed
invention purportedly improves upon response times in
1 In May 2018, Uniloc Luxembourg assigned the ’079
patent to Uniloc 2017, which then joined the suit as a plain-
tiff in September 2018. Uniloc Luxembourg and Uniloc
USA no longer hold an interest in the patent or this appeal.
Case: 19-2072 Document: 40 Page: 3 Filed: 04/07/2020
UNILOC USA, INC. v. SAMSUNG ELECTRONICS AMERICA 3
conventional signaling schemes by sending requests from
the secondary stations in at least a majority of the time
slots allocated to it, until an acknowledgment is received
from the primary station.
Id. at 1:60–2:2. Claim 18 recites:
18. A radio communication system, comprising:
a primary station and a plurality of respec-
tive secondary stations,
the primary station having means for allo-
cating respective time slots in an uplink
channel to the plurality of respective sec-
ondary stations to transmit respective re-
quests for services to the primary station to
establish required services,
wherein the respective secondary stations
have means for re-transmitting the same
respective requests in consecutive allo-
cated time slots without waiting for an
acknowledgement until said acknowledge-
ment is received from the primary station,
wherein said primary station determines
whether a request for services has been
transmitted by at least one of the respec-
tive is [sic] secondary stations by determin-
ing whether a signal strength of the
respective transmitted request of the at
least one of the respective secondary sta-
tions exceeds a threshold value.
(emphases added).
The parties agree that the term “means for allocating
respective time slots . . . to establish required services” is a
means-plus-function term under
35 U.S.C. § 112 ¶ 6, hav-
ing a function of “allocating respective time slots to estab-
lish required services.” In April 2019, the magistrate judge
issued a Claim Construction Memorandum and Order,
Case: 19-2072 Document: 40 Page: 4 Filed: 04/07/2020
4 UNILOC USA, INC. v. SAMSUNG ELECTRONICS AMERICA
holding indefinite claim 18 of the ’079 patent because
“Uniloc ha[d] pointed to nothing in the specification that
links the claimed function to [the structural] elements”
Uniloc identified. J.A. 26. The magistrate judge also held
the claim indefinite “for failure to provide an algorithm.”
J.A. 27. The district court adopted the magistrate judge’s
Claim Construction Memorandum and Order on May 20,
2019. J.A. 3. Following the district court’s May 20 order,
the parties stipulated to the entry of judgment of invalidity
as to claim 18. 2 J.A. 291. The district court entered final
judgment based on the parties’ stipulation. Uniloc appeals,
arguing that the district court erred in holding claim 18 in-
definite. We have jurisdiction under
28 U.S.C.
§ 1295(a)(1).
DISCUSSION
We review a district court’s indefiniteness determina-
tion de novo, except for necessary subsidiary fact findings,
which we review for clear error. Cox Commc’ns v. Sprint
Commc’n Co.,
838 F.3d 1224, 1228 (Fed. Cir. 2016). Under
35 U.S.C. § 112, patent claims must “particularly point[ ]
out and distinctly claim[ ] the subject matter” regarded as
the invention. Pre-AIA section 112 ¶ 6 allows a patentee
to express an element of a claim as a means for performing
a specified function.
35 U.S.C. § 112 ¶ 6 (2006). In ex-
change for using this form of claiming, the patent specifi-
cation must disclose with sufficient particularity the
structure for performing the claimed function and clearly
link that structure to the function. See Ibormeith IP, LLC
v. Mercedes–Benz USA, LLC,
732 F.3d 1376, 1379 (Fed.
Cir. 2013). For a computer-implemented invention claimed
2 The parties also stipulated to the dismissal with
prejudice of Uniloc’s claims of infringement against Sam-
sung, except as to claim 18, and the dismissal without prej-
udice of Samsung’s counterclaims.
Case: 19-2072 Document: 40 Page: 5 Filed: 04/07/2020
UNILOC USA, INC. v. SAMSUNG ELECTRONICS AMERICA 5
in means-plus-function format, the specification must dis-
close the algorithm that the computer performs to accom-
plish the claimed function. Aristocrat Techs. Australia Pty
Ltd. v. Int’l Game Tech.,
521 F.3d 1328, 1333 (Fed. Cir.
2008). Failure to disclose the corresponding algorithm for
a computer-implemented means-plus-function term ren-
ders the claim indefinite. Ergo Licensing LLC v. Care-
Fusion 303, Inc.,
673 F.3d 1361, 1363 (Fed. Cir. 2012).
Uniloc argues that the district court erred in holding
that “means for allocating respective time slots . . . to es-
tablish required services” lacks definite corresponding
structure in the specification. It argues the ’079 patent dis-
closes several algorithms for allocating the respective time
slots that provide enough direction for a person of skill in
the art to create an operative software program. We do not
agree.
The specification does not disclose an algorithm de-
scribing how the claimed “allocating respective time
slots . . . to establish required services” is performed. In-
stead, the specification merely restates the claimed func-
tion. For example, the specification discloses that each
secondary station is allocated a time slot in each frame of
the uplink channel and that each secondary station can de-
termine the time slot it is allocated. ’079 patent at 3:25–
32; see also
id. at 3:36–41 (describing that the base station
can increase the capacity of an uplink channel “by not allo-
cating a time slot for every [secondary station] in every
frame”). Merely describing the results of an unspecified al-
gorithm in this manner, however, is not sufficient to satisfy
the requirements of § 112 ¶ 6. See Aristocrat Techs.,
521
F.3d at 1334–35; see also Ergo Licensing,
673 F.3d at 1365
(holding indefinite a claim reciting a computer-imple-
mented means-plus-function term where “[t]he specifica-
tion merely provide[d] functional language and d[id] not
contain any step-by-step process” for performing the
claimed function). And the failure to disclose an algorithm
Case: 19-2072 Document: 40 Page: 6 Filed: 04/07/2020
6 UNILOC USA, INC. v. SAMSUNG ELECTRONICS AMERICA
is not excused merely because a person of ordinary skill
purportedly “would be able to devise a means to perform
the claimed function.” Function Media, L.L.C. v. Google,
Inc.,
708 F.3d 1310, 1319 (Fed. Cir. 2013). We therefore
agree with the district court that the specification fails to
provide sufficient structure to satisfy the requirements of
§ 112 ¶ 6. Accordingly, we affirm the district court’s judg-
ment that claim 18 of the ’079 patent is invalid for indefi-
niteness.
CONCLUSION
We have considered the parties’ remaining arguments
and find them unpersuasive. Because the district court
correctly held that claim 18 of the ’079 patent is indefinite,
we affirm the district court’s judgment of invalidity.
AFFIRMED
