Directpacket Research, Inc. v. Polycom, Inc.

N OTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
DIRECTPACKET RESEARCH, INC.,
Plaintiff-Appellant
v.
POLYCOM, INC.,
Defendant-Appellee
______________________
2024-1147
______________________
Appeal from the United States District Court for the
Northern District of California in No. 3:19-cv-03918-JD,
Judge James Donato.
______________________
Decided: June 25, 2025
______________________
T ERENCE P. ROSS , Katten Muchin Rosenman LLP,
Washington, DC, argued for plaintiff-appellant. Also rep-
resented by CHRISTOPHER F ERENC, ALLY J ORDAN, ERIC
T HOMAS WERLINGER , SEAN W OODEN.
EIMERIC REIG -P LESSIS , Winston & Strawn LLP, San
Francisco, CA, argued for defendant-appellee. Also repre-
sented by D AVID D ALKE, Los Angeles, CA; K ELLY
CATHERINE HUNSAKER, MATTHEW R. MCC ULLOUGH , Red-
wood City, CA; SAMANTHA MAXFIELD L ERNER , Chicago, IL.
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DIRECTPACKET RESEARCH , INC. v. POLYCOM , INC. 2
______________________
Before M OORE, Chief Judge, CUNNINGHAM , Circuit Judge,
and SCARSI, District Judge.1
SCARSI, District Judge.
Plaintiff-Appellant directPacket Research, Inc. (“di-
rectPacket”) sued Defendant-Appellee Polycom, Inc. (“Pol-
ycom”) for infringement of U.S. Patent No. 7,773,588 B2
(the “’588 patent”). The ’588 patent teaches a system and
method for multimedia communication that employs an in-
termediate communication protocol to achieve interopera-
bility between incompatible multimedia systems. The
district court granted Polycom’s motion for judgment on
the pleadings, concluding that the ’588 patent is directed
to a patent-ineligible abstract idea. For reasons explained
below, we affirm.
BACKGROUND
The ’588 patent is titled “System and Method for Cross
Protocol Communication” and relates to “electronic com-
munications systems and, more particularly, to communi-
cation using incompatible communication protocols.” ’588
patent col. 1 ll. 1–2, 6–8. Claim 1 of the ’588 patent teaches
[a] method for multimedia communication compris-
ing:
receiving a multimedia data stream at a communi-
cation controller in a first protocol from a commu-
nication device, wherein the first protocol
comprises a signaling protocol;
detecting a type of said first protocol;
1 Honorable Mark C. Scarsi, District Judge, United
States District Court for the Central District of California,
sitting by designation.
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DIRECTPACKET RESEARCH , INC. v. POLYCOM , INC. 3
converting said first protocol into an intermediate
protocol;
translating said intermediate protocol into a sec-
ond protocol, wherein the second protocol com-
prises a signaling protocol; and
transmitting said multimedia data stream in said
second protocol to a target communication device;
wherein said first protocol comprises one of a
text-based protocol and a binary protocol and
wherein said second protocol comprises one of a bi-
nary protocol and a text-based protocol.
’588 patent col. 7 ll. 26–41.
As the background of the patent states, the Internet is
often used “for many forms of communication, including
voice conversations, video conferencing, development col-
laboration, and the like.” Id. col. 1 ll. 12–14. Multimedia
communication systems, such as Zoom, FaceTime, and Mi-
crosoft Teams, facilitate these activities. “Multimedia com-
munication systems . . . are typically designed to be
implemented in one of . . . various [communication] proto-
cols.” Id. col. 1 ll. 48–50. “Two examples of such proto-
cols . . . are H.323 . . . and the Session Initiation Protocol
(SIP) . . . .” Id. col. 1 ll. 22–27. “A problem arises when a
party using an H.323 endpoint on one communication sys-
tem . . . desires to communicate with another party using a
different protocol endpoint on another communication sys-
tem.” Id. col. 1 ll. 54–58.
The claimed method and system include “communica-
tion controllers” that convert one communication protocol
into an intermediate protocol, and then convert the inter-
mediate protocol into a destination communication proto-
col. More specifically, “[w]hen initiating multimedia
communications, an endpoint transmits the multimedia
data streams to [a] communication controller . . . .” Id. col.
4 ll. 21–23. The communication controller begins
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DIRECTPACKET RESEARCH , INC. v. POLYCOM , INC. 4
examining the data stream to find protocol messages or
commands contained within the data stream. Id. col. 4 ll.
29–32. The protocol converter then translates “the data
stream line-by-line into a new, interim data stream by re-
trieving the associated message or command in the interim
protocol.” Id. col. 4 ll. 47–49. The data, now encoded ac-
cording to the intermediate protocol, is sent to a down-
stream communication controller, where the intermediate
data stream is decoded into a format appropriate for the
destination multimedia system. Id. col. 4 l. 52–col. 5 l. 18.
Figure 1A illustrates the system and method of the ’588
patent.
’588 patent Fig. 1A.
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DIRECTPACKET RESEARCH , INC. v. POLYCOM , INC. 5
In 2018, directPacket sued Polycom in the Eastern Dis-
trict of Virginia for infringement of the ’588 patent and two
other directPacket patents. J.A. 200. Following proceed-
ings before the district courts, the Patent Trial and Appeal
Board, and this court, the action proceeded in the Northern
District of California upon asserted claims in the ’588 pa-
tent only. See generally J.A. 39–63.
In 2023, Polycom moved under Rule 12(c) of the Fed-
eral Rules of Civil Procedure for judgment on the plead-
ings, arguing that the ’588 patent was directed to patent-
ineligible subject matter, namely the abstract idea of lan-
guage translation. J.A. 760–76. The district court granted
the motion and dismissed the complaint. directPacket
Rsch., Inc. v. Polycom, Inc., No. 3:19-cv-03918-JD, 2023 WL
6301066, at *8 (N.D. Cal. Sep. 26, 2023) (“Opinion”). The
court treated claim 1 as representative for purposes of the
patent eligibility inquiry and applied the two-step frame-
work set forth in Alice Corp. Pty. Ltd. v. CLS Bank Int’l,
573 U.S. 208 (2014). Opinion, 2023 WL 6301066, at *4–8.
At Alice step one, the district court reasoned that the as-
serted claims were directed to the abstract idea of language
translation, and at Alice step two, the district court con-
cluded that the claims did not include an inventive concept
that transformed the claimed abstract idea into a patent-
eligible invention. Id.
After the order of dismissal, directPacket declined to
amend its complaint; consequently, the district court en-
tered judgment. J.A. 1. directPacket timely filed this ap-
peal. We have jurisdiction pursuant to 28 U.S.C.
§ 1295(a)(1).
STANDARD OF REVIEW
We review a district court’s decision to grant judgment
on the pleadings pursuant to Rule 12(c) under the law of
the appropriate regional circuit, “here the Ninth Circuit,
which reviews Rule 12(c) motions de novo.” PersonalWeb
Techs. LLC v. Google LLC, 8 F.4th 1310, 1314 (Fed. Cir.
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DIRECTPACKET RESEARCH , INC. v. POLYCOM , INC. 6
2021) (citing Allergan, Inc. v. Athena Cosms., Inc., 640 F.3d
1377, 1388 (Fed. Cir. 2011)); see Or. Nat. Desert Ass’n v.
U.S. Forest Serv., 550 F.3d 778, 782 (9th Cir. 2008).
Patent eligibility under 35 U.S.C. § 101 is a question of
law that may involve underlying questions of fact. Interval
Licensing LLC v. AOL, Inc., 896 F.3d 1335, 1342 (Fed. Cir.
2018). “We review the district court’s ultimate conclusion
on patent eligibility de novo.” Id. To evaluate patent eligi-
bility under § 101, we apply the familiar Alice two-step
framework. At step one, we determine whether the claim
at issue is “directed to” an abstract idea, a law of nature, or
a natural phenomenon. Alice, 573 U.S. at 218. Under this
directed-to inquiry, “we ask what the patent asserts to be
the focus of the claimed advance over the prior art to deter-
mine whether the claim’s character as a whole is directed
to ineligible subject matter.” Simio, LLC v. FlexSim Soft-
ware Prods., Inc., 983 F.3d 1353, 1359 (Fed. Cir. 2020) (in-
ternal quotation marks and citations omitted). If the claim
is directed to an abstract idea at step one, we move to step
two, “where we examine the elements of the claim to deter-
mine whether it contains an inventive concept sufficient to
transform the claimed abstract idea into a patent-eligible
application.” Id. (internal quotation marks omitted). If the
claim does not contain such an inventive concept at step
two, it is ineligible for patenting.
D ISCUSSION
A. Representativeness
directPacket argues that the district court erred in
treating claim 1 as representative of all asserted claims of
the ’588 patent. Appellant’s Br. 52–55. We agree with the
district court that claim 1 is representative for the purpose
of the patent eligibility analysis.
Limiting the analysis of a § 101 challenge to repre-
sentative claims is appropriate when the claims at issue
are “substantially similar and linked to the same”
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DIRECTPACKET RESEARCH , INC. v. POLYCOM , INC. 7
ineligible concept. Cleveland Clinic Found. v. True Health
Diagnostics LLC, 859 F.3d 1352, 1360 (Fed. Cir. 2017). A
court also “may treat a claim as representative in certain
situations, such as if the patentee does not present any
meaningful argument for the distinctive significance of any
claim limitations not found in the representative claim.”
Berkheimer v. HP Inc., 881 F.3d 1360, 1365 (Fed. Cir.
2018). In all cases, the representativeness inquiry must be
“directly tethered to the claim language.” Solutran, Inc. v.
Elavon, Inc., 931 F.3d 1161, 1168 (Fed. Cir. 2019).
Beginning with the independent claims, independent
claim 1 is representative of independent claims 7, 11, and
18. Claim 11 very nearly mirrors claim 1 except that the
conversion step is performed “irrespective of a second pro-
tocol.” ’588 patent col. 8 ll. 63–64. Claim 7 describes the
communication controller referenced in claim 1, which is
responsible for conducting the conversion of a first protocol
into an intermediate protocol. Id. col. 8 ll. 19–37. Claim
18 describes the computer program installed on the com-
munication controller that directs the protocol conversion
process. Id. col. 9 l. 54–col. 10 l. 13. None of these claims
contain a material distinction for the purposes of the pa-
tent eligibility analysis. In addition, directPacket does not
advance any argument rebutting the proposition that inde-
pendent claim 1 is representative of the other independent
claims. Accordingly, we treat claim 1 as representative of
claims 7, 11, and 18. See Affinity Labs of Tex., LLC v.
DIRECTV, LLC, 838 F.3d 1253, 1256 n.1 (Fed. Cir. 2016).
We reject directPacket’s arguments on appeal as to the
distinctiveness of dependent claims 2–4, 6, 12, 16, and 23.
Appellant’s Br. 53–55. directPacket argues that dependent
claims 2 and 12 recite the additional step of “negotiating
endpoint device translation after transversal of the inter-
net.” Appellant’s Br. 53 (citing ’588 patent col. 7 ll. 42–48,
col. 9 ll. 7–13). directPacket argues that this improves the
speed and efficiency of transmission across the Internet.
Id. But the patent’s claim language is devoid of any
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DIRECTPACKET RESEARCH , INC. v. POLYCOM , INC. 8
reference to speed or efficiency. And while the specification
contains two references to the intermediate protocol being
efficient, neither evinces that the claimed invention pro-
vides more efficient transmission across the Internet. And
regardless of when the protocols are translated, claims 2
and 12 are still directed toward the abstract idea of trans-
lation. In sum, directPacket does not identify “a claim lim-
itation” in claims 2 and 12 “not found in the representative
claim [that] has ‘distinctive significance’ that would have a
material impact on the eligibility analysis.” Mobile Acuity
Ltd. v. Blippar Ltd., 110 F.4th 1280, 1290 (Fed. Cir. 2024)
(quoting Berkheimer, 881 F.3d at 1365).
directPacket next argues that dependent claims 6, 16,
and 23 offer “additional innovation” over claim 1 in that
they teach “the creation of a new and simplified intermedi-
ate communication protocol,” not merely a one-for-one
translation. Appellant’s Br. 54. Notably, directPacket
failed to raise its arguments regarding claims 6, 16 and 23
below. These claims merely cover a version of the interme-
diate protocol described in independent claims 1, 11, and
18 that comprises messages common to the text-based and
binary protocols used by the transmitting and receiving de-
vices. ’588 patent col. 8 ll. 16–18, col. 9 ll. 48–50, col. 10 ll.
58–60. As with dependent claims 2 and 12, claims 6, 16,
and 23 do not offer limitations of “distinctive significance”
from those in the independent claims for the purpose of the
eligibility analysis. Berkheimer, 881 F.3d at 1365. Irre-
spective of the composition of the intermediate protocol,
these dependent claims rely on the same fundamental
methods of employing an intermediate protocol for transla-
tion asserted in the respective independent claims. Accord-
ingly, they are “substantially similar and linked to the
same” ineligible concept. Cleveland Clinic, 859 F.3d at
1360.
Lastly, directPacket argues that dependent claims 3
and 4 recite the use of a “protocol table” as part of the con-
version steps of claim 1. Appellant’s Br. 55. These claims
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DIRECTPACKET RESEARCH , INC. v. POLYCOM , INC. 9
describe the use of a lookup table mapping elements of orig-
inal messages to their corresponding translations, which is
readily analogized to a human consulting a language trans-
lation dictionary. Analyzing whether claim 1 is directed to
language translation would naturally encompass these
claims.
Accordingly, we treat claim 1 as representative of the
other asserted claims of the ’588 patent.
B. § 101 Patent Eligibility
We begin with Alice step one. The ’588 patent teaches
an invention that “allows communication devices that use
different communication protocols to participate in multi-
media communications on the same system.” ’588 patent
col. 2 ll. 25–27. The district court concluded that “the
translation of ‘multimedia streams’ using an intermediate
protocol is readily analogized to the abstract idea of lan-
guage translation.” Opinion, 2023 WL 6301066, at *6. We
have consistently held that the ideas of “encoding and de-
coding . . . data” and of “converting formats” are abstract.
Hawk Tech. Sys., LLC v. Castle Retail, LLC, 60 F.4th 1349,
1357 (Fed. Cir. 2023) (quoting Adaptive Streaming Inc. v.
Netflix, Inc., 836 F. App’x 900, 903 (Fed. Cir. 2020)).
directPacket attempts to overcome this conclusion by
arguing that the ’588 patent’s claims are directed to “im-
proving the functioning of videoconferencing systems by
achieving endpoint device interoperability in such a man-
ner that allows for real-time multimedia communication
over the Internet.” Appellant’s Br. 32. However, our “anal-
ysis at step one ‘must focus on’ the claim language,” and
the claim language makes no reference to videoconferenc-
ing systems, real-time communication, or the Internet.
Hawk Tech., 60 F.4th at 1357 (quoting ChargePoint, Inc. v.
SemaConnect, Inc., 920 F.3d 759, 769 (Fed. Cir. 2019)). In
addition, claim 1 does not “recite a specific enough solution
to make the asserted technological improvement concrete.”
Koninklijke KPN N.V. v. Gemalto M2M GmbH, 942 F.3d
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DIRECTPACKET RESEARCH , INC. v. POLYCOM , INC. 10
1143, 1152 (Fed. Cir. 2019). Claim 1 recites five functional
steps for (1) “receiving a multimedia data stream . . . in a
first protocol,” (2) “detecting a type of said first protocol,”
(3) “converting said first protocol into an intermediate pro-
tocol,” (4) “translating said intermediate protocol into a
second protocol,” and (5) “transmitting said multimedia
data . . . to a target communication device.” ’588 patent col.
7 ll. 26–41. But the claim says little “of how the purported
invention improve[s] the functionality” of device interoper-
ability; its limitations “are recited at such a level of result-
oriented generality” that it fails to teach anything beyond
a generalized implementation of the abstract idea of trans-
lation. Hawk Tech., 60 F.4th at 1358 (alteration in origi-
nal) (quoting Koninklijke, 942 F.3d at 1152).
“At Alice step two, we consider the claim elements—
individually and as an ordered combination—‘to assess
whether [they] transform the nature of the claim into a pa-
tent-eligible application of the abstract idea.’” Id. (altera-
tion in original) (quoting Two-Way Media Ltd. v. Comcast
Cable Commc’ns, LLC, 874 F.3d 1329, 1338 (Fed. Cir.
2017)). We conclude that the ’588 patent fails to include
“an inventive concept sufficient to transform the claimed
abstract idea into a patent-eligible invention.” Yu v. Apple
Inc., 1 F.4th 1040, 1045 (Fed. Cir. 2021).
directPacket argues that the ’588 patent “recites the
use of a new and simplified intermediate communication
protocol comprised of the common elements of the commu-
nication protocols used by the incompatible endpoints to
transmit the multimedia data stream across the Internet
in real time.” Appellant’s Br. 41 (citing ’588 patent col. 3
ll. 40–56). directPacket asserts that this is unconventional,
as “[t]he conventional solution would be to convert directly
between incompatible communication protocols.” Id. The
innovation directPacket advances does not mirror the
claim limitations; none of the ’588 patent’s claims prescribe
real-time transmission. Further, using an intermediate
protocol itself rests on the abstract idea of translation.
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DIRECTPACKET RESEARCH , INC. v. POLYCOM , INC. 11
“Adding one abstract idea . . . to another abstract
idea . . . does not render the claim non-abstract.” Recog-
niCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327 (Fed.
Cir. 2017). Nor is employing an intermediate protocol to
facilitate communication inventive in the context of trans-
lation. We need look no further than the longstanding and
well-known historical practice of employing a lingua franca
to facilitate trade among various nations. Claim 1 presents
no inventive concept to transform the abstract idea of
translation into something patent eligible.2
Accordingly, we agree with the district court that the
asserted claims of the ’588 patent are invalid under § 101.
C. Procedural Error
directPacket contends that the district court improp-
erly violated principles of party presentation and relied on
facts outside the reviewable record. Appellant’s Br. 44–51.
The district court analogized the claimed invention to “the
commonplace human communication practice of . . . ‘relay
translation,’” a phrase neither party raised in its respective
briefing. Opinion, 2023 WL 6301066, at *6. To support its
analogy, the court cited academic texts outside the record
for propositions of fact, including that “[r]elay translation
is common in polyglot communities for use in
2 directPacket argues that dependent claims 2 and 12
recite an inventive concept by requiring a specific order of
operations, namely transmitting the multimedia data
stream over the Internet in the intermediate protocol and
then translating it into the receiving protocol. Appellant’s
Br. 42. Even if we had not found claim 1 representative of
claims 2 and 12, because directPacket “did not present this
alleged inventive concept . . . before the district court,” it
has forfeited this argument. Eolas Techs. Inc. v. Ama-
zon.com, Inc., No. 2022-1932, 2024 WL 371959, at *6 (Fed.
Cir. Feb. 1, 2024); see J.A. 801–02.
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circumstances ranging from refugee and asylum centers to
court proceedings and sign language communication.” Id.
We cannot say the district court’s relay translation
analogy itself “departed so drastically from the principle of
party presentation as to constitute an abuse of discretion.”
United States v. Sineneng-Smith, 590 U.S. 371, 375 (2020).
After all, “reasoning by analogy” is “a commonplace task
for any lawyer or judge,” N.Y. State Rifle & Pistol Ass’n v.
Bruen, 597 U.S. 1, 28 (2022), and we have approved “the
practice of taking note of fundamental economic concepts
and technological developments” in the Alice inquiry, Af-
finity Labs of Tex., 838 F.3d at 1270. Moreover, while Pol-
ycom did not specifically use the phrase “relay translation,”
Polycom’s district court briefing made clear that its lingua
franca analogy represented the same concept. See, e.g.,
J.A. 829. We see no abuse of discretion by the district court
in comparing the claimed invention to relay translation.
That said, a district court generally may not rest a Rule
12 decision on matters outside the pleadings, Fed. R. Civ.
P. 12(d), or take judicial notice of adjudicative facts without
offering the parties an opportunity to be heard, Fed. R.
Evid. 201(e). Rule 12 is clear that, if materials outside the
pleadings are presented in support of a Rule 12(c) motion
and received by the district court, the court must treat the
motion as one for summary judgment. Fed. R. Civ. P. 12(d).
The district court’s reliance on extra-record academic texts
— which were not presented by the parties — is incompat-
ible with the procedural requirements of the Federal Rules.
However, this error is harmless in this case where the “dis-
missal can be justified without reference to any extraneous
matters.” 5C Charles A. Wright & Arthur R. Miller, Fed-
eral Practice and Procedure § 1364 (3d ed. 2025); Hawk
Tech., 60 F.4th at 1360. Upon de novo review and without
reference to extraneous materials, we conclude the as-
serted claims of the ’588 patent are invalid.
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CONCLUSION
We have considered directPacket’s remaining argu-
ments and find them unpersuasive. For the foregoing rea-
sons, we affirm the district court’s decision.
AFFIRMED
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