In a Memorandum Opinion and Order dated March 31, 2022, Chief Judge Barbara Lynn of the United States District Court for the Northern District of Texas (Dallas Division) found the only asserted claim of U.S. Patent No. 6,917,304 (“the ‘304 Patent”) patent ineligible under 35 U.S.C. § 101.
Patent troll Magnacross LLC sued OKI Data Americas, Inc. for patent infringement of the ‘304 patent, which had been asserted in over one hundred cases. Magnacross alleged OKI's “making, using, offering to sell, selling and/or importing, without limitation” certain printers, infringed claim 1 of the ‘304 Patent. Asserted claim 1 reads:
1. A method of wireless transmission of data in digital and/or analogue format through a communications channel from at least two data sensors to a data processing means said method comprising
the step of division of said channel into sub-channels and transmitting said data from said data sensors respectively though said sub-channels accordingly; characterized by
a) said step of division of said communications channel being effected asymmetrically whereby the data carrying capacities of said sub-channels are unequal; and
b) the data rate required for data transmission from said local sensors differing substantially between said at least two sensors; and
c) allocating data from said local data sensors to respective ones or groups of said sub-channels in accordance with the data carrying capacities of said sub-channels.
Addressing Step One of the Alice test, OKI argued that “stripped of excess verbiage,” the claim is drawn to nothing more than dividing a data channel into sub-channels and transmitting data from data sensors through said sub-channels, quoting Affinity Labs of Texas, LLC v. DirecTV, LLC, 838 F.3d 1253, 1256 (Fed. Cir. 2016). OKI further argued that in the best light for the plaintiff, the ‘304 Patent merely results in an improvement in the efficiency of data transmission. In Alice Step Two, OKI argued that the ‘304 Patent uses conventional elements (i.e., communication channel, sensors, data processing means) in their conventional and generic manner, to perform their conventional and generic functions. The Court agreed.
The Court concluded that the asserted claim was similar to the claims held ineligible by the Federal Circuit in Two-Way Media Ltd. v. Comcast Cable Communications, LLC, 874 F.3d 1329 (Fed. Cir. 2017), noting that the claims in Two-Way “recited a method of transmitting packets of information over a communications network comprising: converting information into streams of digital packets; routing the streams to users; controlling the routing; and monitoring the reception of packets by the users.” The Court found the ‘304 Patent claims were similarly written in functional language “without means for achieving the purported technological improvement” and without any description concerning “how to achieve [the claimed] results in a nonabstract way.” The Court held that “the claims are not directed to an improvement to computer functionality, as opposed to the abstract idea itself.”
Turning to Alice Step Two, the Court concluded “that none of the claim's elements, assessed individually and as an ordered combination, disclose an inventive concept capable of transforming the abstract idea into patentable subject matter.”
The Court also rejected Magnacross' assertion that it was inappropriate to decide patent eligibility under § 101 before claim construction and noted that “the Federal Circuit has made clear that § 101 can be decided prior to claim construction if a full understanding of the basic character of the claimed subject matter is ascertainable” citing Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat. Ass'n, 776 F.3d 1343, 1349 (Fed. Cir. 2014).
Oki Data Americas, Inc. was successfully represented by Marc R. Labgold, Patrick J. Hoeffner and Megan C. Labgold of Labgold Law (Reston, VA) and William D. Taylor of Taylor & Taylor Law, P.C. (Arlington, TX).