Emergency Alert System Is Not Patent-Eligible: Tenaha Licensing LLC v. TigerConnect, Inc.

Patent claims directed to “alert and notification” are ineligible under 35 U.S.C. § 101 and the two-part Mayo/Alice patent-eligibility test, said a Delaware magistrate judge, recommending  granting a Rule 12(b)(6) motion to dismiss a lawsuit alleging infringement of U.S. Patent No. 8,238,869. Tenaha Licensing LLC v. TigerConnect, Inc., C.A. No. 19-1400-LPS-SRF (D. Del. Jan. 2, 2019). Further, the court recommended granting the motion with prejudice. Any attempt by the plaintiff to amend its complaint would be futile, the court said; the patent specification affirmatively provided intrinsic evidence of patent-eligibility that could not be contradicted by extrinsic evidence.

The court began by describing the analysis it would follow – this explanation is worth quoting because it is the patent-eligibility analysis that most courts follow, but that few courts explain so clearly:

In resolving Defendant's Motion, the Court will first discuss which claim will be specifically addressed herein as representative. Thereafter, it will analyze the relevant claim under both steps of the test for patent eligibility set out in Alice Corp. Pty. Ltd. v. CLS Bank International, 573 U.S. 208 (2014). Finally, the Court will consider whether any factual disputes preclude granting Defendant's motion and whether leave to amend the Complaint should be granted.

The court selected claim 15 – proposed by the defendant and not opposed by the plaintiff – as representative:

A method of providing emergency and non-emergency event notification to a plurality of users, comprising:

using a low-range transceiver to automatically relay within a wide area notification area a first emergency notification signal from a wide area notification device, and to further provide an audible and/or visible alert notification in response to the first emergency notification signal; and

manually, and independently from the first emergency notification signal, providing a second non-emergency notification signal to at least one of the plurality of users using the low-range transceiver, wherein the non-emergency notification signal is a user-specific and event-specific notification signal that is transmitted by an operator of the low-range transceiver to a wireless transmitter that is worn by a user, wherein the user is a person other than the operator.

Under Alice Step One, the defendant alleged that the claim was directed to “the abstract idea of ‘relaying notification signals.’” The court agreed, providing numerous citations to the specification, and then noting that “the claim language itself shows that the invention is focused on relaying notification signals.” Starting with the broad claim preamble, and then ambling into the body of the claim, it was clear that “the claimed advance” was relaying notification signals. The plaintiff’s argument that there were claimed improvement to emergency signaling was to no avail, because these improvements were not technical improvements.

And under Alice Step Two, there was no inventive concept to save the claims. The plaintiff asserted “‘several inventive features’ such as ‘automatic, independent, and locally restricted emergency signaling.’” But even the ’869 patent Specification admitted that these were not new concepts. Concerning automation, the claimed trigger device could not be inventive, because it was only described very broadly in the Specification. Independent signaling simply meant automated, or operator, independent – nothing new to see here. And localization simply meant that transmissions had limited range, something that was well known.

Further, the court rejected the plaintiff’s argument under Berkheimer v. HP Inc. that there were factual disputes requiring deferral of the present motion. The plaintiff at most “disputes whether the ‘claimed techniques’ as a whole were "conventional in the year 2005.” But this did not raise any specific dispute that could save the claims – as discussed above, it was clear from the Specification that the claimed signaling was all well known.

Lessons for Practice

This patent was drafted in 2005, well below Alice (2014), and even well before Bilski v. Kappos (2010). My gut feeling is that neither the District Court and the Federal Circuit are likely to disagree with the instant opinion. The ’869 patent did not give the plaintiff much to work with. A drafter today would surely have provided much greater – and explicit – focus on technical problems and solutions.