Same Specification, But Different Results

In an opinion issued October 19, 2026, Judge Gregory Williams of the U.S. District Court for the District of Delaware granted in part and denied in part a Section 101 summary judgment motion in TQ Delta, LLC v. DISH Network Corp., No. 15-614-GBW (D. Del. Oct. 19, 2026) (Dkt. No. 744), holding that the asserted claims of one patent were not invalid under Section 101 and that the asserted claims of the other were invalid. The two patents involve multicarrier communications systems that can reduce peak-to-average power ratio (PAR). Importantly, the two patents share a common specification, yet the court reached opposite conclusions concerning the patents' eligibility. The decision demonstrates how the claim language itself, and not the specification's description of the benefits of the invention standing alone, controls the eligibility analysis.

The Challenged Patents and Representative Claims

TQ Delta sued the DISH and EchoStar defendants in July 2015, asserting, among other claims, claims 1, 2, 7, 12, 13, 14, 15 and 20 of U.S. Patent No. 9,014,243 (the '243 Patent) and claims 1, 6 and 9 of U.S. Patent No. 8,718,158 (the '158 Patent, and together, the Asserted Patents). The defendants later moved for summary judgment that all of the asserted claims were invalid under Section 101.

Both Asserted Patents address a problem in multicarrier systems that communicate over a communication channel using multicarrier modulation or discrete multitone modulation and specifically relate to multicarrier communication systems that lower the PAR of transmitted signals. If the phases of the modulated carriers are not random, PAR can increase greatly, resulting in high power consumption and/or a high probability of clipping the transmission signal. According to the Asserted Patents, the increased PAR is the problem the claimed technology seeks to address.

The Asserted Patents purport to solve this issue by effectively scrambling the phase of the modulated carrier signals in order to provide a low PAR for the transmission signal. The court accepted the defendants' identification of claim 1 of each patent as representative of the asserted claims. TQ Delta did not present any argument against representativeness; therefore, under Mobile Acuity Ltd. v. Blippar Ltd., 110 F.4th 1280 (Fed. Cir. 2024), it failed to offer the requisite "non-frivolous arguments" that the representative claims could not fairly determine the eligibility of the other asserted claims.

Claim 1 of the '243 Patent recites:

A method, in a multicarrier communications transceiver comprising a bit scrambler followed by a phase scrambler, comprising:

scrambling, using the bit scrambler, a plurality of input bits to generate a plurality of scrambled output bits, wherein at least one scrambled output bit is different than a corresponding input bit;

scrambling, using the phase scrambler, a plurality of carrier phases associated with the plurality of scrambled output bits;

transmitting at least one scrambled output bit on a first carrier; and

transmitting the at least one scrambled output bit on a second carrier.

Claim 1 of the '158 Patent recites:

In a multicarrier modulation system including a first transceiver in communication with a second transceiver using a transmission signal having a plurality of carrier signals for modulating a plurality of data bits, each carrier signal having a phase characteristic associated with at least one bit of the plurality of data bits, a method for scrambling the phase characteristics of the carrier signals comprising:

transmitting the plurality of data bits from the first transceiver to the second transceiver;

associating a carrier signal with a value determined independently of any bit of the plurality of data bits carried by the carrier signal, the value associated with the carrier signal determined by a pseudo-random number generator;

determining a phase shift for the carrier signal at least based on the value associated with the carrier signal;

modulating at least one bit of the plurality of data bits on the carrier signal;

modulating the at least one bit on a second carrier signal of the plurality of carrier signals.

The '243 Patent: A Concrete Technological Solution, Not an Abstract Idea

The defendants argued that the key advance disclosed in the Asserted Patents was the phase scrambler. According to the defendants, with respect to the '243 Patent, the phase scrambler merely adjusted the phases of carrier signals while still representing the same underlying data; therefore, the defendants contended, representative claim 1 was written in results-based functional language and directed to the abstract idea of data conversion.

To support their argument, the defendants analogized claim 1 of the '243 Patent to the claims at issue in Hawk Tech. Sys., LLC v. Castle Retail, LLC, 60 F.4th 1349 (Fed. Cir. 2023). In Hawk Tech., the asserted claims were directed to a method of receiving, displaying, converting, storing and transmitting digital video in results-based functional language and critically failed to recite a specific solution that made the asserted improvement (conserving bandwidth while preserving quality) concrete; at most, they recited the abstract idea of data manipulation.

The defendants also relied upon a prior District of Delaware decision in Redwood Techs., LLC v. Netgear, Inc., 738 F. Supp. 3d 511 (D. Del. 2024). In Redwood Techs., the claim recited a "frame configuration determiner" that determines a modulation system, a first symbol generator that modulates a digital transmission signal according to that modulation system and a second symbol generator that modulates the signal according to a predetermined modulation system. The claim was directed, at Alice Step One, to the abstract idea of "determining and using a modulation method to generate data" because, although the specification explained how the frame configuration determiner functioned and what factors it considered, the claim language did not require those details as set forth in the specification.

The court disagreed with the defendants' position and found that claim 1 of the '243 Patent, as construed, recites a specific way to transmit data (the use of a bit scrambler and a phase scrambler that pseudo-randomly adjusts carrier phases) to lower PAR in a multicarrier transceiver. The court likened claim 1 to the claims at issue in Constellation Designs, LLC v. LG Elecs. Inc., 189 F.4th 1111 (Fed. Cir. 2026), which used constellation-point spacing and location to improve coding gains, and Koninklijke KPN N.V. v. Gemalto M2M GmbH, 942 F.3d 1143 (Fed. Cir. 2019), which required modifying, "in time," the permutation applied to original data to improve detection of systematic errors. Similar to the claims in those cases, claim 1 of the '243 Patent covered "a concrete implementation of a technological improvement to solve a technological problem."

Claim construction was central to this conclusion. Read as a whole and as construed, the claim requires three steps: 1) scrambling input bits to generate scrambled output bits, 2) scrambling the phases associated with those scrambled output bits and 3) transmitting the scrambled output bits on multiple carriers. The court stressed that this was not a case "where the purported benefits of the claimed invention, as described in the specification, are absent from the claim language." Because the claim captured the PAR-reducing mechanism, it was directed to a specific improvement in multicarrier transceiver functionality, and the court denied the defendants' motion as to the '243 Patent without reaching Step Two.

The '158 Patent: An Abstract Idea Without Concrete Application

The '243 Patent's sibling, the '158 Patent, fared differently. The defendants argued that claim 1 recited only "the preparatory steps of calculating a desired phase shift" and did not claim the steps the phase scrambler would take to effect the phase shift. The plaintiff conceded that the claim language does not require applying the phase adjustment to the carrier wave and argued instead that a claim need not recite every element needed for practical use.

The Step One Analysis

The court held that, "[a]bsent an instruction … to apply the phase shift to the phase of a carrier signal," the claim was directed to the abstract idea of calculating scrambled phases. In reaching this conclusion, the court found Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344 (Fed. Cir. 2014), instructive. In Digitech, the U.S. Court of Appeals for the Federal Circuit held that a claim reciting the generation and combination of data for a device profile was abstract because it did not require input from a physical device. Although the specification described benefits from using the device profile in an image processor, the claim did not claim the processor's use of the profile to capture, transform or render a digital image.

The court rejected the plaintiff's argument that a skilled artisan would understand the claim to require applying the calculated scrambled phase to the existing phase of a carrier wave – a requirement not present in claim 1's language. Whatever a skilled artisan would understand, unclaimed features "are irrelevant as to step 1 or step 2 of the Alice analysis."

The Step Two Analysis

The plaintiff did not argue that any single element supplied an inventive concept. It relied on the ordered combination, which it said produced "robust data transmission without high PAR." The court held that this benefit was absent from the claim language, even though the specification itself made clear that applying the calculated shift was necessary to reduce PAR. The court explained that the inventive concept must be "captured by the claims," and it held the asserted '158 Patent claims invalid under Section 101.

Practical Takeaways

• Shared Specifications Do Not Ensure Shared Outcomes: Although the Asserted Patents rest on the same disclosure, the result turned on whether each claim recited the steps that deliver the technical benefit. Claim 1 of the '243 Patent captured the PAR-reducing mechanism and purported benefits described in the specification, but claim 1 of the '158 Patent did not require applying the calculated phase shift. That failure was fatal to the '158 Patent's eligibility.
• Claim Construction Can Decide Eligibility: The court construed the "phase scrambler" of claim 1 of the '243 Patent to mean a "component operable to adjust the phases of the carrier signals, by pseudo-randomly varying amounts." That phase scrambler, as construed and read in the context of claim 1 as a whole, supplied a specific technological solution rather than an abstract idea whose asserted benefits appeared only in the specification.

Keep an eye here for more Section 101 analysis.