Corporate Counsel Daily, Protocol interoperability technology provider’s infringement lawsuit against Polycom properly dismissed, (Jun 25, 2025)

By Saurabh Kashyap, B.A., M.A., LL.B., LL.M.

Under the Alice framework, the district court correctly found the asserted patent invalid due to abstractness and lack of inventive concept.

In a non-precedential disposition, the U.S. Court of Appeals for the Federal Circuit affirmed a California district court’s judgment dismissing directPacket Research, Inc.’s infringement claims against Polycom, Inc. The appellate court held that the district court correctly found directPacket’s asserted protocol translation patent lacked patent-eligible subject matter under 35 U.S.C. § 101 as it was directed to the abstract idea of language translation and failed to disclose an inventive concept that would render it patent-eligible under the Alice framework (directPacket Research, Inc. v. Polycom, Inc., No. 24-1147 (Fed. Cir. Jun. 25, 2025)).

Background. The plaintiff/appellant, directPacket Research, Inc., specializes in developing multimedia communication technologies that facilitate interoperability between disparate systems. The defendant/appellee, Polycom, Inc., is a leading manufacturer of videoconferencing and telepresence systems. The two companies operate in the same space, offering competing solutions for real-time communication and multimedia data transmission.

DirectPacket’s U.S. Patent No. 7,773,588 B2 (the '588 patent), titled "System and Method for Cross Protocol Communication," was the patent-in-suit for the purposes of the instant appeal. The patent discloses a system for converting multimedia communication signals between incompatible protocols, such as H.323 and SIP, by translating them into an intermediate protocol and then into the destination protocol. The asserted claims, including claim 1, describe a five-step method for protocol translation: receiving a multimedia data stream in a first signaling protocol, identifying the protocol type, converting it into an intermediate protocol, translating the intermediate protocol into a second protocol, and transmitting the resulting data to the target device.

DirectPacket filed the original infringement suit in 2018 in the Eastern District of Virginia, asserting the '588 patent and two others. After procedural transfers and PTAB proceedings, only claims under the '588 patent remained; the case was then transferred to the Northern District of California. In 2023, Polycom moved for judgment on the pleadings under Rule 12(c), arguing that the '588 patent claimed only the abstract idea of translation without a transformative inventive concept. The district court granted the motion and dismissed the complaint, applying the framework established in Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208 (2014). directPacket declined to amend its complaint and appealed.

Claim representativeness. On appeal, directPacket contended that the district court erred in treating claim 1 as representative of all asserted claims. The Federal Circuit disagreed. It held that claim 1 was properly deemed representative because the remaining independent claims (7, 11, and 18) merely recited variations of the same protocol conversion process using a communication controller or computer program, and dependent claims (2–4, 6, 12, 16, 23) did not introduce materially distinct limitations. The court cited Berkheimer v. HP Inc., 881 F.3d 1360, 1365 (Fed. Cir. 2018), and Cleveland Clinic Found. v. True Health Diagnostics LLC, 859 F.3d 1352, 1360 (Fed. Cir. 2017), reaffirming that courts may treat a claim as representative when the patentee fails to demonstrate meaningful differences.

The court found that dependent claims allegedly introducing efficiencies or protocol tables were still rooted in the same core idea of translation. It analogized claims 3 and 4, which recited the use of protocol tables, to consulting a dictionary, noting that this approach fell squarely within prior rulings on abstractness.

Patent eligibility. Applying step one of the Alice framework, the Federal Circuit determined that the asserted claims were directed to the abstract idea of translation. Citing Hawk Tech. Sys., LLC v. Castle Retail, LLC, 60 F.4th 1349, 1357 (Fed. Cir. 2023), the court noted that encoding, decoding, and format conversion have consistently been held to be abstract. Thus, the court rejected directPacket’s argument that the invention improved videoconferencing or enabled real-time Internet-based communications. None of these technological improvements were reflected in the claim language.

Additionally, referencing Simio, LLC v. FlexSim Software Prods., Inc., 983 F.3d 1353, 1359 (Fed. Cir. 2020), the court reiterated that patent eligibility must focus on “what the patent asserts to be the focus of the claimed advance over the prior art” Here, the claims focused on a functional outcome—protocol conversion—without specifying how the claimed method improved underlying systems. The limitations were described in result-oriented terms and failed to articulate a concrete technological improvement, as required under Koninklijke KPN N.V. v. Gemalto M2M GmbH, 942 F.3d 1143, 1152 (Fed. Cir. 2019).

At Alice step two, the court held that the claims failed to include an inventive concept that would render the abstract idea patent-eligible. The use of an intermediate protocol—claimed as the inventive step—was itself an abstract idea. Citing Recognicorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017), the court held that layering abstract ideas does not make a claim non-abstract. Furthermore, the court rejected directPacket’s arguments regarding the novelty of transmitting over the Internet or negotiating protocol translation after traversal, as these limitations were not apparent in the claim language and were forfeited on appeal for not having been raised before the district court.

Procedural objections. directPacket objected to the district court’s use of the term “relay translation” and the court’s citation to academic sources outside the record to analogize the claimed invention to human translation intermediaries. Although the Federal Circuit acknowledged that referencing extraneous material may violate Rule 12(d) and Rule 201(e) of the Federal Rules of Evidence, it deemed the error harmless. The district court’s analogy, while drawn from outside materials, mirrored the parties’ own arguments, especially Polycom’s reference to a lingua franca, and the decision could be justified without those references.

The Case is No. 24-1147.

Judge: Scarsi, M.

Attorneys: Terence P. Ross (Katten Muchin Rosenman LLP) for directPacket Research, Inc. Eimeric Reig-Plessis (Winston & Strawn LLP) for Polycom, Inc.

Companies: directPacket Research, Inc.; Polycom, Inc.

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