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`NOTE: This disposition is nonprecedential.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.
`
`ADP, LLC,
`Defendant
`
`BIG FISH GAMES, INC.,
`Defendants-Appellees
`______________________
`
`2018-1132, 2018-1346
`______________________
`
`Appeals from the United States District Court for the
`Eastern District of Texas in Nos. 2:16-cv-00741-RWS, 2:16-
`cv-00858-RWS, Judge Robert Schroeder, III.
`
`--------------------------------------------------
`
`UNILOC USA, INC., UNILOC LUXEMBOURG S.A.,
`UNILOC 2017 LLC,
`Plaintiffs-Appellants
`
`v.
`
`BITDEFENDER, INC., KASPERSKY LAB, INC.,
`Defendants-Appellees
`
`

`

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`2
`
`UNILOC USA, INC. v. ADP, LLC
`
`______________________
`
`2018-1448
`______________________
`
`Appeal from the United States District Court for the
`Eastern District of Texas in Nos. 2:16-cv-00393-RWS, 2:16-
`cv-00394-RWS,
`2:16-cv-00871-RWS,
`Judge Robert
`Schroeder, III.
`
`______________________
`
`Decided: May 24, 2019
`______________________
`
`JAMES J. FOSTER, Prince Lobel Tye LLP, Boston, MA,
`argued for plaintiffs-appellants. Also represented by PAUL
`J. HAYES, AARON JACOBS.
`
` DOUGLAS FRED STEWART, Bracewell LLP, Seattle, WA,
`argued for defendant-appellee Big Fish Games, Inc. Also
`represented by DAVID JOHN BALL, New York, NY.
`
` MENG XI, Susman Godfrey LLP, Los Angeles, CA, ar-
`gued for defendant-appellee Bitdefender, Inc. Also repre-
`sented by OLEG ELKHUNOVICH, KALPANA SRINIVASAN;
`SHAWN DANIEL BLACKBURN, Houston, TX.
`
` CASEY ALLEN KNISER, Patterson Thuente Pedersen,
`PA, Minneapolis, MN, for defendant-appellee Kaspersky
`Lab, Inc. Also represented by ERIC H. CHADWICK.
` ______________________
`
`Before PROST, Chief Judge, LINN and MOORE, Circuit
`Judges.
`
`LINN, Circuit Judge.
` Uniloc USA, Inc. and Uniloc Luxembourg S.A. appeal
`the dismissal by the District Court for the Eastern District
`
`

`

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`UNILOC USA, INC. v. ADP, LLC
`
`3
`
`of Texas of their complaints of infringement of U.S. Patents
`No. 7,069,293 (“’293 patent”), No. 6,324,578 (“’578 patent”),
`No. 6,510,466 (“’466 patent”) and No. 6,728,766 (“’766 pa-
`tent”) in related cases against Appellees ADP, LLC;
`Kaspersky Lab, Inc.; Big Fish Games, Inc.; and Bitde-
`fender, Inc. See Uniloc USA, Inc. v. AVG Techs. USA, Inc.
`(“AVG Decision”), No. 2:16-cv-00393 (E.D. Tex. Mar. 28,
`2017)
`(dismissing,
`inter alia, claims against AVG,
`Kaspersky, and BitDefender); Uniloc USA, Inc. v. ADP,
`LLC (“ADP Decision”), No. 2:16-cv-00741 (E.D. Tex. Sep.
`28, 2017) (dismissing claims against ADP and Big Fish).
`Appellants also appeal the district court’s denial of Uniloc
`and ADP’s joint motion to vacate the ADP decision with re-
`spect to ADP only. Uniloc USA, Inc. v. ADP, LLC (“Vacatur
`Order”), No. 2:16-cv-741 (E.D. Tex. Nov. 20, 2017).
` We reverse and remand the district court’s dismissal
`based on patent ineligibility of the invention claimed in the
`’293 and ’578 patents, and affirm the district court’s dis-
`missal with respect to the ’466 and ’766 patents. We re-
`verse and remand the district court’s order denying
`vacatur. Because we write for the parties, we rely on the
`district court’s exposition of the facts of the case.
`I. Standing and Jurisdiction
`A. Uniloc 2017 Assignment
` Uniloc USA and Uniloc Luxembourg filed notices of ap-
`peal in Uniloc USA, Inc. v. Big Fish Games, Inc. on October
`27, 2017, and in Uniloc USA, Inc. v. Bitdefender LLC and
`Uniloc USA, Inc. v. Kaspersky Lab, Inc. on January 17,
`2018. On May 3, 2018, Uniloc USA and Uniloc Luxem-
`bourg transferred all their rights in and to the patents-in-
`suit to Uniloc 2017. During oral argument on March 7,
`2019, and via letter on March 11, 2019, Uniloc USA and
`Uniloc Luxembourg moved to substitute Uniloc 2017 as the
`party in interest, or, in the alternative, to join Uniloc 2017.
`Appellees opposed.
`
`

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`4
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`UNILOC USA, INC. v. ADP, LLC
`
` When Uniloc USA and Uniloc Luxembourg filed the no-
`tices of appeal that set our jurisdiction in these cases, they
`were indisputably the owners of the patents-in-suit. The
`transfer of the patent rights to Uniloc 2017 did not divest
`this court of jurisdiction or the ability to substitute or join
`a successor-in-interest. See, e.g., Minn. Min. & Mfg. Co. v.
`Eco Chem, Inc., 757 F.2d 1256, 1262 (Fed. Cir. 1985) (quot-
`ing Jones v. Village of Proctorville, Ohio, 303 F.2d 311, 313
`(6th Cir. 1962)) (substitution of a corporate successor-in-
`interest “did not defeat the Court’s jurisdiction once that
`jurisdiction has been invoked properly by” the original
`party); TOC Retail, Inc. v. Gulf Coast Oil Co. of Miss., Inc.,
`No. 97-30969, 1999 WL 197149, at *12 (5th Cir. Mar. 25,
`1999) (unpublished) (explaining that Fed. R. App. P. Rule
`43(b) is based on Fed. R. Civ. P. 25, and “permits” the court
`to order substitution of parties “when there has been a
`transfer of interest”); Orexigen Therapeutics, Inc. v. Actavis
`Labs. FL, Inc., No. 2018-1221, slip op at *2 (Fed. Cir. Sep.
`19, 2018) (citing Beghin-Say Int’l v. Rasmussen, 733 F.2d
`1568, 1569 (Fed. Cir. 1984)) (“[T]his court has previously
`granted motions to substitute under Rule 43(b) when a
`party has acquired the patents during an appeal.”). See
`also Fed. R. App. P. 43(a) Advisory Committee Notes (cit-
`ing Fed. R. Civ. P. 25(a)) (“The first three sentences de-
`scribe a procedure similar to the rule on substitution in
`civil actions in the district court”); 6 Moore’s Federal Prac-
`tice Civil § 25.30 (noting that Rule 25 is intended “to allow
`an action to continue unabated when an interest in a law-
`suit changes hands, without initiating an entirely new
`suit”); 7A Wright & Miller, Fed. Practice & Proc. § 1958
`(noting that under Fed. R. Civ. P. 25, “[t]he court, if it sees
`fit, may allow the transferee [of an interest] to be substi-
`tuted for the transferor” where an interest is transferred
`during the pendency of an action); Minn. Min. & Mfg., 757
`F.2d at 1263 (quoting In re Covington Grain Co., 638 F.2d
`1362, 1364 (5th Cir. 1981)) (“Rule 25(c) is not designed to
`create new relationships among parties to a suit but is
`
`

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`UNILOC USA, INC. v. ADP, LLC
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`5
`
`designed to allow the [original] action to continue unabated
`when an interest in the lawsuit changes hands.”).
`Although there is no Rule in the Federal Rules of Ap-
`pellate Procedure allowing joinder, the Supreme Court, the
`Fifth Circuit, and this court have allowed appellate joinder
`under Federal Rule of Civil Procedure 21 governing mis-
`joinder and nonjoinder. Mullaney v. Anderson, 342 U.S.
`415, 417 (1952) (allowing joinder where it “merely puts the
`principal, the real party in interest, in the position of his
`avowed agent,” “it can in no wise embarrass the defend-
`ant,” and where earlier joinder would not have “in any way
`affected the course of the litigation”); Newman-Green, Inc.
`v. Alfonzo-Larrain, 490 U.S. 826, 833 (1989) (discussing
`Mullaney and the appellate courts’ joinder powers); Banks
`Next friend of W.B. v. St. James Parish School Bd., No. 16-
`31052, 2018 WL 6584305, at *4 (5th Cir. Dec. 12, 2018)
`(recognizing that a “court can sua sponte determine that a
`required party is missing, and it can add that party to the
`case” under Fed. R. Civ. P. 21); Mentor H/S, Inc. v. Medical
`Device Alliance, Inc., 244 F.3d 1365, 1373 (Fed. Cir. 2001)
`(noting that appellate joinder may be available where it
`“would not prejudice the defendants”).
`Appellees argue that they would be prejudiced by Ap-
`pellants’ approximately ten-month delay in filing the mo-
`tion to join or substitute, and in failing to attach the full
`Asset Purchase Agreement among the Uniloc entities.
`We conclude that joinder of Uniloc 2017 is in order. We
`find no merit in Appellees’ assertion that the transfer of
`rights to Uniloc 2017, the delay in informing the court, or
`the failure to attach the Asset Purchase Agreement preju-
`dices Appellees or provides any “tactical advantage” to
`Uniloc. Joining Uniloc 2017 does not affect Appellees’ po-
`tential claims against Uniloc USA and Uniloc Luxembourg.
`An earlier motion filed immediately after the transfer (and
`after the notice of appeal) would not have changed the
`course of the litigation. Uniloc 2017 has not requested
`
`

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`6
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`UNILOC USA, INC. v. ADP, LLC
`
`additional time to file separate merits briefs or to take any
`additional measures to accommodate Uniloc 2017 as a sep-
`arate party.1 Judicial efficiency—both with respect to this
`case and the several other disputes pending at the Court
`involving the Uniloc entities and at least some of the Ap-
`pellees—strongly supports joinder here. See Mullaney, 342
`U.S. at 417 (in the circumstances of that case, noting that
`failure to join a party on appeal would “require the new
`plaintiffs to start over in the District Court [and] would en-
`tail needless waste and runs counter to effective judicial
`administration”). Moreover, joining Uniloc 2017 retains
`Uniloc USA and Uniloc Luxembourg as parties in this case
`and addresses Appellees’ concern that Uniloc 2017 may not
`have accepted Uniloc USA and Uniloc Luxembourg's liabil-
`ities along with the transfer of rights in the Asset Purchase
`Agreement.
`Uniloc’s motion to join Uniloc 2017 is granted and the
`caption is amended accordingly.2
`B. Uniloc USA, Inc. and Uniloc Luxembourg S.A.’s
`Alleged Breach of the IBM Agreement
`By motion dated February 19, 2019, Appellees Bitde-
`
`fender, Big Fish Games, Inc. and Kaspersky Lab, Inc. (col-
`lectively, “Movants”) argue that Uniloc lost standing with
`respect to Movants when Uniloc failed to indemnify ADP
`after IBM licensed ADP on October 20, 2017.
`According to Movants, Uniloc’s failure to indemnify
`ADP automatically triggered Section 2.1(e) in the 2016
`Uniloc-IBM Agreement, which gave IBM the right to
`
`1 Counsel for Uniloc USA and Uniloc Luxembourg
`stated at oral argument that he also represents Uniloc
`2017.
`2 Hereinafter, we use “Uniloc” to refer to the Uniloc
`entity with the rights in the patent at the time being dis-
`cussed.
`
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`UNILOC USA, INC. v. ADP, LLC
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`7
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`“license . . . without notice or accounting” to “third parties
`involved in any activities related to or arising from defense,
`enforcement or licensing under any Assigned Patent.” Mo-
`vants contend that Uniloc thus could no longer wholly ex-
`clude Appellees from practicing the patents, and that
`Uniloc thus lacked constitutional standing under WiAV So-
`lutions LLC v. Motorola, Inc., 631 F.3d 1257 (Fed. Cir.
`2010). Relying on Moore v. Consolidated Edison Co. of NY,
`409 F.3d 506, 509 (2d Cir. 2005), Movants argue that be-
`cause constitutional standing was lost, we must dismiss
`the appeal.
`Movants’ argument is predicated on the existence of a
`breach of the 2016 Uniloc-IBM Agreement. But Movants
`have not shown that IBM, which is not a party to this liti-
`gation, considers Uniloc to be in breach or has asserted a
`right to sublicense and release Movants from liability re-
`lating to the patents-at-issue. Only ADP and Movants here
`have asserted a breach of the 2016 Uniloc-IBM Agreement.
`But neither ADP nor Movants are parties to the Agree-
`ment.
`Movants cite no other basis from which to assert a
`breach of the indemnification provision on behalf of IBM so
`as to activate the reversionary interest on which they base
`their jurisdictional argument. For example, they do not as-
`sert that they are intended beneficiaries of the contract.
`See Restatement (2d) of Contracts § 302 (defining intended
`and incidental beneficiaries) and Comment e (“[U]nless the
`third person is an intended beneficiary as here defined, no
`duty to him is created.”); U.C.C. § 3-301 (defining “[p]erson
`entitled to enforce’ an instrument” as “(i) the holder of the
`instrument, (ii) a nonholder in possession of the instru-
`ment who has the rights of a holder, or (iii) [in circum-
`stances of a lost, destroyed or stolen instrument, or where
`the instrument was accepted by mistake]”). The breach of
`a contract potentially involves disputes of materiality, po-
`tential opportunities to cure, and available remedies, all of
`which are consummate contract issues to be resolved
`
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`UNILOC USA, INC. v. ADP, LLC
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`between the parties. See, e.g., Restatement (2d) of Contract
`§§ 225 (effects of the non-occurrence of a condition); 229
`(excuse of a condition to avoid forfeiture); 241 (circum-
`stances significant in determining whether a failure is ma-
`terial); 242 (circumstances significant in determining when
`remaining duties are discharged); 246 (effect of acceptance
`as excusing the non-occurrence of a condition). Movants
`have not pointed to any case where a non-beneficiary third
`party has asserted a breach of a contract that successfully
`triggered remedial provisions in the contract.
`For the foregoing reasons, Movants motion to dismiss
`based on a loss of standing is denied.
`C. Vacatur of the ADP Decision
`Uniloc argues that the district court abused its discre-
`tion when it denied Uniloc’s motion to vacate the ADP judg-
`ment. Uniloc argues that unless the ADP judgment is
`vacated, third parties may argue that it creates issue pre-
`clusion. Uniloc contends this is unfair because it was de-
`nied the right to appeal the ADP judgment by the mooting
`of the Uniloc-ADP dispute. Appellees do not dispute that
`there is no longer a live dispute between Uniloc and ADP,
`but argue that mootness occurred due to Uniloc’s actions,
`making vacatur inappropriate.
`Vacatur due to mootness is an equitable remedy. “The
`principal condition to which we have looked [in deciding
`whether vacatur is appropriate] is whether the party seek-
`ing relief from the judgment below caused the mootness by
`voluntary action.” U.S. Bancorp Mortg. Co. v. Bonner Mall
`P'ship, 513 U.S. 18, 24 (1994). See also United States v.
`Munsingwear, 340 U.S. 36, 39–40 (1950) (noting the “es-
`tablished practice of the Court in dealing with a civil case
`from a court in the federal system which has become moot
`while on its way here or pending our decision on the merits
`is to reverse or vacate the judgment below and remand
`with a direction to dismiss” when “review [of a judgment]
`was prevented through happenstance”). Where “mootness
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`UNILOC USA, INC. v. ADP, LLC
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`9
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`occurred prior to the rendering of final judgment. . . vaca-
`tur and dismissal is automatic,” because mootness ordinar-
`ily undermines jurisdiction, and, under Fifth Circuit law,
`“we cannot leave undisturbed a decision that lacked juris-
`diction.” Goldin v. Bartholow, 166 F.3d 710, 718 (5th Cir.
`1999).
` We need not decide when the mootness here occurred.
`If it occurred, as Uniloc contends, on September 27, 2018,
`when Uniloc agreed to amend the Agreement with IBM to
`give IBM the right to license ADP, then the case was ren-
`dered moot prior to the district court’s decision (and judg-
`ment). If, on the other hand, the case was rendered moot
`when IBM licensed ADP on October 20, 2018 or later, then
`IBM and ADP—not Uniloc, the party seeking relief from
`the judgement—were the actors responsible for the moot-
`ness. In either event, review by Uniloc of the judgment
`against it was “prevented through happenstance.” U.S.
`Bancorp, 513 U.S. at 23 (quoting Munsingwear, 340 U.S.
`at 40 and Karcher v. May, 484 U.S. 72, 82 (1987)). Under
`the particular circumstances of this case, vacatur was in
`order and should have been granted as to ADP.
` We therefore reverse the district court’s Order denying
`Uniloc’s and ADP’s joint motion to vacate the ADP Decision
`and remand with instructions to vacate the ADP Decision
`as to ADP only.
`
`II. Patent Eligibility
` We next turn to the substantive issue of patent eligibil-
`ity with respect to each of the patents-in-suit.
`
`“Eligibility under 35 U.S.C. § 101 is a question of law,
`based on underlying facts.” SAP Am., Inc. v. InvestPic,
`LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018). We analyze el-
`igibility under the two-step Alice framework. Alice Corp.
`v. CLS Bank Int’l, 573 U.S. 208, 217 (2014). In step one,
`we must “determine whether the claims at issue are di-
`rected to a patent-ineligible concept.” Id. at 218. Under
`
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`UNILOC USA, INC. v. ADP, LLC
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`this inquiry, we evaluate “the focus of the claimed advance
`over the prior art” to determine if the character of the claim
`as a whole, considered in light of the specification, is di-
`rected to excluded subject matter. Intellectual Ventures I
`LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1338 (Fed.
`Cir. 2017) (quoting Affinity Labs of Tex., LLC v. DIRECTV,
`LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016)); Enfish, LLC v.
`Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016).
`In step two, we “consider the elements of each claim
`both individually and ‘as an ordered combination’ to deter-
`mine whether the additional elements ‘transform the na-
`ture of the claim’ into a patent eligible application.” Alice,
`573 U.S. at 218 (quoting Mayo Collaborative Servs. v. Pro-
`metheus Labs., Inc., 566 U.S. 66, 78–79 (2012)). Step two
`“looks more precisely at what the claim elements add” to
`determine if “they identify an inventive concept in the ap-
`plication of the ineligible matter to which . . . the claim is
`directed.” SAP, 898 F.3d at 1167 (internal quotation marks
`omitted). The abstract idea itself cannot supply the in-
`ventive concept, “no matter how groundbreaking the ad-
`vance.” Id. at 1171.
`
`A. ’293 Patent
`Uniloc argues that the ’293 patent claims are directed
`to an “improvement over then-existing methods for central-
`ized distribution of software” by allowing applications to be
`installed on client computers “from a single point for an en-
`tire managed network environment.” ’293 patent, col. 3, ll.
`34–39. Uniloc argues that the ’293 patent claims are di-
`rected to a particular way to achieve this advance by “pre-
`paring a file packet associated with the application
`program and including a segment configured to initiate
`registration operations for the application program at the
`target on-demand server; and distributing the file packet
`to the target on-demand server to make the application
`program available for use by a user at a client.” Id. at
`col. 21, ll. 31–37 (Claim 1).
`
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`11
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`Appellees argue that the claims are directed to the ab-
`stract idea of centralized distribution of software. Accord-
`ing to Appellees, the file packet is not a specific way to
`accomplish the result because the specification shows that
`file packets performed an “inherent function[]” in existing
`off-the-shelf software products. Appellees’ Br. at 36 (citing
`’293 patent, col. 17, ll. 38). Appellees argue that the ’293
`patent claims are not directed to an improvement in net-
`work functionality, but rather merely provide centralized
`distribution of software by using conventional computer
`components as tools.
`We agree with Uniloc that the claims of the ’293 patent
`are directed to the use of file packets with segments config-
`ured to initiate centralized registration of an application
`from an application server, and that this is not an abstract
`idea. It is true, as Appellees argue, that the goal of the
`claims is functional: to allow centralized distribution of
`software. See, e.g., ’293 patent, Abstract (“[S]oftware dis-
`tribution and installation may be provided from a single
`network management server.”); id. at col. 3, ll. 43–46 (“[I]t
`is an object of the present invention to provide methods,
`systems and computer program products for centralized
`management of application programs on a computer net-
`work.”). But the patent claims a particular improvement
`in how this is done—i.e. by use of a file packet to enable the
`further functionality of initiating on-demand registration
`of the application. This is the clear “focus” of the claims
`and the asserted advance described in the specification.
`See id. at col. 4, ll. 14–26; col. 5, ll. 33–58; col. 17, l. 55 – col.
`20, l. 64.
`There is nothing in the record to suggest that such net-
`work architecture was so conventional as to exclude that
`architectural limitation in framing what the claims are “di-
`rected to.” The district court erred in discounting this key
`focus of the claims in part because of a misreading of the
`specification’s description of the management approach
`provided by Tivoli Systems, Inc. and referred to as the
`
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`12
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`UNILOC USA, INC. v. ADP, LLC
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`Tivoli Management Environment (“TME”). The district
`court reasoned that the invention claimed in the ’293 pa-
`tent is not directed to an improvement in the computer or
`network functionality because it uses “off-the shelf compo-
`nents,” “includes only generic activities of servers,” and
`“does not amount to more than a routine activity of com-
`mercial network management software as described by the
`specification itself.” ADP Decision at 14 (citing, inter alia,
`’293 patent, col. 17, ll. 20–54). The cited description in the
`specification, however, merely describes the implementa-
`tion of the claimed invention using the TME. It does not
`indicate that the TME itself previously used the claimed
`file packets, nor does it support the Board’s conclusion that
`the use of file packets was conventional. See ’293 patent,
`col. 17, ll. 27–31 (“[T]he invention will be described with
`respect to its application and implementation using a spe-
`cific network management approach provided by Tivoli
`Systems Inc. referred to as the Tivoli Management Envi-
`ronment.”). The district court failed to appreciate that the
`specification was describing the enhanced functionality
`provided to the prior art TME system by the use of the
`claimed file packets. It is undisputed that the addition of
`the file packet limitation during prosecution was the heart
`of the patent’s allowance.3 See J. App’x at 751 (examiner’s
`reasons for allowance). As noted, supra, the relevant ques-
`tion for purposes of step one is what is “the focus of the
`
`3 Uniloc argues that Appellants have waived their
`right to rely on the prosecution history by not raising it be-
`low. We disagree. There is no dispute that Uniloc main-
`tained in the district court that the file packet was a focus
`of its invention. The prosecution history is part of the in-
`trinsic record of the patent and is a “matter[] of public rec-
`ord.” Data Engine Techs. LLC. V. Google LLC, 906 F.3d
`999, 1008 n. 2 (Fed. Cir. 2018). It is thus subject to judicial
`notice and may be considered in our de novo review of the
`district court’s eligibility analysis. Id.
`
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`13
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`claimed advance over the prior art.” Intellectual Ventures
`I, 850 F.3d at 1338. Here, that focus is on the use of the
`file packet configured to initiate registration of an applica-
`tion from an application server. This is not an abstract
`idea, but a particular improvement in the functioning of
`prior art application distribution networks. See Finjan,
`Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299, 1305 (Fed. Cir.
`2018) (“Here, the claims recite more than a mere result.
`Instead, they recite specific steps—generating a security
`profile that identifies suspicious code and linking it to a
`downloadable—that accomplish the desired result.”);
`McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d
`1299, 1314 (Fed. Cir. 2016) (“We therefore look to whether
`the claims in these patents focus on a specific means or
`method that improves the relevant technology or are in-
`stead directed to a result or effect that itself is the abstract
`idea and merely invoke generic processes and machin-
`ery.”).
`Because the claims in the ’293 patent are not directed
`to an abstract idea, we need not proceed to Alice step two.
`We reverse the district court’s dismissal with respect to the
`’293 patent claims and remand for further proceedings con-
`sistent with this opinion.
`B. ’578 Patent
`Claim 14 of the ’578 patent recites a network providing
`
`for the acquisition of both a “user set of the plurality of
`
`
`4 The district court considered Claim 1 of the ’578 pa-
`tent as representative. Without explanation, Uniloc on ap-
`peal focuses on Claim 6. Because Uniloc has not shown
`that it objected to the district court’s consideration of Claim
`1 as representative of the claims of the ’578 patent, and
`does not explain why we should focus instead on Claim 6,
`we continue to analyze all the asserted claims in the ’578
`patent based on Claim 1.
`
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`14
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`UNILOC USA, INC. v. ADP, LLC
`
`configurable preferences” and an “administrator set of the
`plurality of configurable preferences.” The claim requires
`distribution of an application launcher program to the
`user, and the specification explains that the administrator
`preferences are stored on the server. ’578 patent, col. 3,
`ll.55–61. This positioning of the components allows the ap-
`plication to launch in “respons[e] to a request from one of
`the plurality of authorized users” pursuant to both sets of
`preferences. In other words, it allows for on-demand in-
`stallation of two-tier customized applications.
` We agree with Uniloc that this is not just a functional
`claim using conventional technological components. In-
`stead, the claim is directed to a particular way of using a
`conventional application server to nevertheless allow on-
`demand installation of an application incorporating prefer-
`ences from two different sources by adding the application
`manager and configuration manager as additions to each
`application. This is not an abstract idea under Alice step
`one. See Enfish, 822 F.3d at 1337–38 (holding patent eligi-
`ble claims directed to “a specific improvement to computer
`functionality” that “functions differently than conventional
`database structures” and “achieves other benefits over con-
`ventional databases”). The two specific added components
`do not merely fulfill their ordinary roles—their use to-
`gether on an application server represents a different way
`of achieving the improvement claimed in the ’578 patent.
`Moreover, even if the claim was abstract under step
`one, it would still be eligible under step two. The position-
`ing of these components on the application server is akin to
`the inventive concept in Bascom Global Internet Servs., Inc.
`v. AT&T Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir.
`2016) (“The inventive concept described and claimed in the
`[patent-at-issue] is the installation of a filtering tool at a
`specific location, remote from the end-users, with customi-
`zable filtering features specific to each end user. This de-
`sign gives the filtering tool both the benefits of a filter on a
`local computer and the benefits of a filter on the ISP
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`15
`
`server.”). The positioning of these components on the ap-
`plication server together with the application launcher on
`the client computer allows customization by both the ad-
`ministrator and the user in such a way as the installation
`can proceed on-demand with both sets of preferences.
`There has been no showing or determination that such a
`network architecture was conventional.
`Appellees argue that Uniloc has waived the argument
`that the steps and ordered combination of steps of the ’578
`patent were not conventional by not raising it to the district
`court. We disagree. In Uniloc’s opposition to Big Fish’s
`motion to dismiss, Uniloc argued that the claims of the ’578
`patent were patent eligible because, inter alia, the configu-
`rable preferences and the combination of connections and
`hardware and applications were unconventional. Plain-
`tiffs’ Opposition to Defendant Big Fish Games, Inc.’s Mo-
`tion to Dismiss for Failure to State a Claim, Uniloc USA,
`Inc. v. ADP, No. 2:16-cv-00741 (E.D. Tex. Dec. 1, 2016),
`ECF No. 97 at *8–10.
`We thus conclude that the district court erred in hold-
`ing that Claim 1 of the ’578 patent is patent ineligible. We
`reverse the district court’s grant of Appellees’ motion to dis-
`miss with respect to the ’578 patent and remand for further
`proceedings consistent with this opinion.
`C. ’466 Patent
`In considering step one, the district court began its
`analysis by characterizing what the claims of the ’466 pa-
`tent were directed to by merely repeating the language of
`the claims themselves. See AVG Decision, at 11. The dis-
`trict court more appropriately went on, however, to con-
`sider the “focus of the claimed advance over the prior art”
`and “the character of the claim as a whole” in concluding
`that the representative claim did not claim a particular
`way of programming or designing the software, and did not
`use computers in any non-conventional way. We agree
`with this conclusion and hold that the claims of the ’466
`
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`UNILOC USA, INC. v. ADP, LLC
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`patent are directed to using a desktop interface to access
`an application server. This is an abstract idea.
` Uniloc argues that the invention claimed in the ’466
`patent improves upon the prior art by allowing for “seam-
`less integration of application access and session charac-
`teristics across heterogenous network.” ’466 patent, col. 3,
`ll. 21-25. Uniloc argues that it does this through a user
`desktop interface that includes “display regions associated
`with application programs for which the user is author-
`ized.”
`
`The “display regions” of the claimed desktop interface
`are simply icons that execute programs. Appellees alleged
`that the components are all conventional. Uniloc does not
`argue that the display icons or the user desktop incorporate
`any unconventional software or perform any unconven-
`tional functionality, see Appellant’s Opening Br. at 33; id.
`at 4 (“A known approach to reducing software distribution
`problems was to use an application server to store and
`maintain applications that may then be transmitted over a
`network to clients using a software program.”), nor does
`Uniloc contend that using an icon to access an application
`is in any