DirectPacket Research, Inc. v. Polycom, Inc., decided June 25, 2025

I. Case Overview

This case concerns the patent eligibility of U.S. Patent No. 7,773,588 B2 (the “’588 patent”), held by DirectPacket Research, Inc. ("directPacket"). The Federal Circuit affirmed the district court’s judgment on the pleadings, concluding that the ’588 patent is directed to a patent-ineligible abstract idea.

II. Parties Involved

• Plaintiff-Appellant: DirectPacket Research, Inc.

• Defendant-Appellee: Polycom, Inc.
  

III. Legal Background

The core of the dispute revolves around 35 U.S.C. § 101, which defines what subject matter is eligible for patenting. The Federal Circuit applied the two-step framework established in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208 (2014), for determining patent eligibility:

1. Alice Step One: Determine whether the claim is "directed to" an abstract idea, a law of nature, or a natural phenomenon. This step asks "what the patent asserts to be the focus of the claimed advance over the prior art to determine whether the claim’s character as a whole is directed to ineligible subject matter."
   

2. Alice Step Two: If the claim is directed to an abstract idea at step one, examine the elements of the claim to determine whether it contains an "inventive concept sufficient to transform the claimed abstract idea into a patent-eligible application."
   

IV. The '588 Patent: System and Method for Cross Protocol Communication

A. Patent Title and Subject Matter

The '588 patent is titled "System and Method for Cross Protocol Communication" and relates to "electronic communications systems and, more particularly, to communication using incompatible communication protocols." ('588 patent col. 1 ll. 1–2, 6–8).

B. Core Problem Addressed

The patent addresses a common issue in multimedia communication: "A problem arises when a party using an H.323 endpoint on one communication system . . . desires to communicate with another party using a different protocol endpoint on another communication system." ('588 patent col. 1 ll. 54–58). Existing multimedia communication systems, like Zoom, FaceTime, and Microsoft Teams, are "typically designed to be implemented in one of . . . various [communication] protocols," such as H.323 and SIP.

C. Claim 1: Representative Method for Multimedia Communication

Claim 1 of the '588 patent teaches a method comprising the following steps:

1. "receiving a multimedia data stream at a communication controller in a first protocol from a communication device, wherein the first protocol comprises a signaling protocol;"

2. "detecting a type of said first protocol;"

3. "converting said first protocol into an intermediate protocol;"

4. "translating said intermediate protocol into a second protocol, wherein the second protocol comprises a signaling protocol;"

5. "transmitting said multimedia data stream in said second protocol to a target communication device;"

The claim further specifies that the "first protocol comprises one of a text-based protocol and a binary protocol and wherein said second protocol comprises one of a binary protocol and a text-based protocol." ('588 patent col. 7 ll. 26–41).

D. System Functionality

The claimed method and system utilize "communication controllers" (illustrated in Figure 1A) to facilitate communication between incompatible systems. A communication controller first examines the incoming data stream to identify protocol messages, then translates the data stream "line-by-line into a new, interim data stream by retrieving the associated message or command in the interim protocol." ('588 patent col. 4 ll. 47–49). This intermediate data stream is then sent to a downstream communication controller for decoding into the destination format.

V. Procedural History

• 2018: directPacket sued Polycom in the Eastern District of Virginia for infringement of the ’588 patent and two other patents.

• Subsequently: The action proceeded in the Northern District of California, asserting only claims from the ’588 patent.

• 2023: Polycom moved for judgment on the pleadings under Rule 12(c), arguing the ’588 patent was directed to patent-ineligible subject matter, specifically the abstract idea of language translation.

• District Court Decision (N.D. Cal. Sep. 26, 2023): The district court granted Polycom's motion, concluding that the ’588 patent claims were directed to the abstract idea of language translation (Alice step one) and lacked an inventive concept to transform this idea into patent-eligible subject matter (Alice step two). The court treated claim 1 as representative.

• Appeal: directPacket timely appealed the judgment.
  

VI. Federal Circuit's Analysis and Holdings

A. Representativeness of Claims

The Federal Circuit affirmed the district court’s decision to treat claim 1 as representative of all asserted claims (claims 1, 2–4, 6, 7, 11, 12, 16, 18, and 23).

• Reasoning: The court found that the independent claims (1, 7, 11, and 18) were "substantially similar and linked to the same ineligible concept." DirectPacket failed to provide a "meaningful argument for the distinctive significance of any claim limitations not found in the representative claim."

• Dependent Claims (2–4, 6, 12, 16, 23):Claims 2 and 12 (negotiating endpoint device translation): DirectPacket argued these claims improved speed and efficiency, but the court found "the patent’s claim language is devoid of any reference to speed or efficiency." Regardless, they were still directed to the abstract idea of translation.

• Claims 6, 16, and 23 (new and simplified intermediate protocol): DirectPacket argued these claims offered "additional innovation" by teaching "the creation of a new and simplified intermediate communication protocol." The court found these merely covered a version of the intermediate protocol already described and did not offer "limitations of ‘distinctive significance’" that would impact eligibility. They "rely on the same fundamental methods of employing an intermediate protocol for translation."

• Claims 3 and 4 (protocol table): These claims describe using a lookup table, which the court found "readily analogized to a human consulting a language translation dictionary."
  

B. § 101 Patent Eligibility (Alice Framework)

1. Alice Step One: Directed to an Abstract Idea

• District Court's Conclusion (Affirmed): The claims were directed to "the abstract idea of language translation." The Federal Circuit reiterated its consistent holding that "the ideas of 'encoding and decoding . . . data' and of 'converting formats' are abstract." (Hawk Tech. Sys., LLC v. Castle Retail, LLC, 60 F.4th 1349, 1357 (Fed. Cir. 2023)).

• DirectPacket's Argument: directPacket contended the patent improved videoconferencing systems by achieving real-time interoperability over the Internet.

• Federal Circuit's Rejection: The court noted that "our 'analysis at step one “must focus on” the claim language,' and the claim language makes no reference to videoconferencing systems, real-time communication, or the Internet." Furthermore, claim 1 "recites five functional steps" but says little "of how the purported invention improve[s] the functionality" of device interoperability. Its limitations "are recited at such a level of result-oriented generality" that they fail to teach anything beyond a generalized implementation of the abstract idea of translation.
  

2. Alice Step Two: Inventive Concept

• Conclusion (Affirmed): The Federal Circuit concluded that the ’588 patent "fails to include 'an inventive concept sufficient to transform the claimed abstract idea into a patent-eligible invention.'"

• DirectPacket's Argument: directPacket argued that the patent "recites the use of a new and simplified intermediate communication protocol comprised of the common elements of the communication protocols used by the incompatible endpoints to transmit the multimedia data stream across the Internet in real time," asserting this was unconventional compared to direct conversion.

• Federal Circuit's Rejection:The court found that the claim limitations do not "prescribe real-time transmission."

• "Further, using an intermediate protocol itself rests on the abstract idea of translation."

• "Adding one abstract idea . . . to another abstract idea . . . does not render the claim non-abstract." (RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017)).

• The court highlighted that "employing an intermediate protocol to facilitate communication inventive in the context of translation" is not inventive, drawing an analogy to "the longstanding and well-known historical practice of employing a lingua franca to facilitate trade among various nations."
  

C. Procedural Error Claim

• DirectPacket's Argument: directPacket argued the district court improperly violated principles of party presentation by relying on "relay translation" and citing extra-record academic texts.

• Federal Circuit's Ruling:The court found the "relay translation analogy itself 'departed so drastically from the principle of party presentation as to constitute an abuse of discretion.'" It noted that "reasoning by analogy" is "a commonplace task for any lawyer or judge" and that Polycom’s briefing, though not using the exact phrase, made clear its "lingua franca analogy represented the same concept."

• However, the court acknowledged that the district court's "reliance on extra-record academic texts — which were not presented by the parties — is incompatible with the procedural requirements of the Federal Rules."

• Harmless Error: Despite this procedural error, the court deemed it harmless because the "dismissal can be justified without reference to any extraneous matters." The Federal Circuit conducted a de novo review "without reference to extraneous materials" and independently concluded the claims were invalid.
  

VII. Conclusion

The Federal Circuit affirmed the district court’s decision, holding that the asserted claims of the ’588 patent are invalid under 35 U.S.C. § 101 because they are directed to the abstract idea of language translation and lack an inventive concept.