IP Newsletter (January 2016)

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 Lenovos 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 Courts 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 Patents 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 patentineligible, 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 Lenovos 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.

Contact Us
Please feel free to contact us at attorneys@farjami.com for more information
regarding the above and your patent preparation and prosecution matters.

About Us
Our boutique patent firm was established in 1999 and has about eight (8)
attorneys and four (4) patent paralegals. The firm specializes in drafting and prosecuting
patent applications in all electronics and computer related areas including networks,
wired/wireless
communications,
semiconductor
fabrication, semiconductor
packaging,
speech
processing, microprocessors, image/video
processing,
software, web applications, and Internet games, as well as mechanical and medical
devices. We already have over eighteen hundred (1,800) patents issued in the U.S., and
have been consistently selected as a "Go-To" Law Firm for Fortune 500 Companies
over a number of consecutive years.

FARJAMI & FARJAMI LLP

An Intellectual Property Law Firm
attorneys@farjami.com | www.farjami.com

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