Proving that application of the Mayo/Alice patent-eligibility test remains unpredictable and inconsistent, patent claims directed to a security system that monitors “premises using a graphical floor plan” have survived a motion for summary judgment brought under 35 U.S.C. § 101. Applied Capital, Inc. v. ADT Corp., 1:16-CV-00815 (D. N.M. August 7, 2019). U.S. Patent Nos. 8,378,817 and 9,728,082, in a priority chain and having a common specification, were both entitled, and directed to, a “Premises Monitoring System.”
Claim 1 of the ’817 patent is representative:
A method comprising:
receiving one or more signals containing a device identifier and a device condition from one or more remote alarm monitoring systems;
retrieving enhanced information based on the device identifier and the device condition;
determining one or more communication methods and communication destinations based on the device identifier and the device condition; and dispatching the enhanced information to the one or more communication destinations using the one or more communication methods; and
wherein the retrieving enhanced information based on the device identifier and the device condition comprises retrieving images based on the device identifier and the device condition, the images comprising all of the members selected from the group consisting of superimposed visual indicators, hierarchically organized graphical images, and vector-based graphical images.
The defendants argued that the claims were directed to “information processing steps, including the collecting, analyzing, and dispatching of information concerning alarm or warning system.” But the court bought the plaintiff’s argument that the claims survived Alice because they were “directed to a specific way of providing users with graphical information concerning a monitored event in a premises—embodied by using dynamically-rendered, event-specific, graphical floor plan.”
To find the claims not directed to an abstract idea, the court emphasized that the patent specification “and the prosecution history focus on improving real-time notification capabilities of security systems by using a dynamically-rendered, event specific, graphical floor plan that pinpoints exact location and condition of events.” And the court emphasized the USPTO’s statement of reasons for allowance stating that the claims were inventive over prior art.
The court’s legal analysis relied heavily on the Federal Circuit’s 2016 decision in Enfish, LLC v. Microsoft Corp., finding the claims here did not simply apply generic computing technology, but instead were, as in Enfish, “directed to a specific implementation of a solution to a problem in the software arts.” Specifically, the court said
The dynamically-rendered, event-specific, graphical floor plan is more than a generic way to hold the information to be provided to a user. The asserted claims of the patent are directed to a new way of interacting with the information conveyed by an alarm system.
After finding that the asserted patent claims were not directed to an abstract idea under part 1 of the Alice/Mayo test, the court added that the claims could have survived under part 2 of the test, if needed. In so doing, the court again conflated novelty and patent-eligibility:
the court would find that evidence of record shows that using a dynamically-rendered, event-specific, graphical floor plan in a security system was a novel, inventive concept sufficient to transform the claims into a patent eligible application.
Lessons for Practice
This case is a good demonstration of the benefits – if you are a patent drafter wishing to insulate against a Section 101 challenge – of including statements in the patent specification emphasizing technical improvements and benefits realized by the claimed invention. Personally, I read these claims and saw good arguments for arguing that they simply applied generic computing technology. However, the patent owner had good counter-ammunition not just in the patent specification, but in the file history(!) to argue for non-abstractedness.