In granting a motion to dismiss based on lack of patent-eligible subject matter under 35 U.S.C. § 101 and the Alice/Mayo test, a court held that patent claims for multiple patents directed to “wireless surveillance systems for monitoring a target environment” are abstract ideas, and “merely implement[ing] the abstract idea of wireless communication and remote surveillance using well-known, generic computer components and functionalities” does not provide an inventive concept. Sensormatic v. Wyze Labs., No. 19-1543-CFC (D. Del. Sept. 3, 2020) (patents-in-suit are U.S. Patent Nos. 7,954,129; 7,730,534; 7,936,370; and 8,610,772)
The court identified claim 14 of the ‘129 patent as representative of all claims in the asserted patents. Independent claim 14 of the ‘129 patent is reproduced here:
14. A surveillance system for wireless communication between components comprising:
a base system including at least two wireless input capture devices (ICDs), the ICSs having at least one sensor and at least one input component for detecting and recording inputs, a processor, a memory, a transmitter/receiver, all constructed and configured in electronic connection;
wherein the ICDs are operable for direct wireless cross-communication with each other without requiring interaction with a remote server computer for operation;
and wherein the ICDs are operable for direct wireless communication with a remote viewing device operable by an authorized user.
The court applied the two-step Alice framework to Wize Labs’ Rule 12(b)(6) motion to dismiss. The court found the asserted patents here are analogous to a patent invalidated by the Federal Circuit in Chamberlain Grp., Inc. v. Techtronic Indus. Co., because “‘[t]he only described difference between the prior art…systems and the claimed…system [wa]s that the status information about the system [wa]s communicated wirelessly, in order to overcome certain undesirable disadvantages of systems using physical signal paths.” 935 F.3d 1341 (Fed. Cir. 2019), alteration in original. Sensormatic argued that “the patents are not directed to the abstract idea of wireless communication because the asserted patents are directed to direct wireless communication…as opposed to indirect wireless communication.” However, the court disagreed because both direct and indirect wireless communication “merely takes information previously transmitted via a wire and transmits that information wirelessly,” and “both…were basic conventional forms of communication at the time of the invention.”
Further, the court found that the asserted patents are analogous to the patents invalidated by the Federal Circuit FairWarning IP, LLC v. Iatric Systems, Inc. because the patents were directed to “‘collecting and analyzing information to detect misuse and notifying a user when misuse was detected.’” 839 F.3d 1089 (Fed. Cir. 2016). The court further noted “‘the general concept of keeping watch over property is timeless,’” Joao Control & Monitoring Sys., LLC v. Telular Corp., 173 F. Supp. 3d 717, 727 (N.D. Ill. 2016), and the asserted patents here are also directed to “monitoring an environment for security or control purposes by collecting and analyzing data about the environment.” As such, the court found the claims are directed to the abstract idea of wireless surveillance.
The court went on to analyze step two of Alice. The court noted that the components of the claimed wireless system “are described in the asserted patent as off-the-shelf, pre-existing computer components” that “perform nothing more than conventional computer functions.” Sensormatic argued that “the input capture device ‘is not just any generic component’” because it “must be ‘capable of cross-communication…and two-way wireless communication with other devices.’” However, the court disagreed because “[t]hose capabilities…are just subsets of the abstract idea of wireless communication and thus they do not take the invention beyond the abstract idea.” Accordingly, the court found that the claimed systems and methods “do not improve how the abstract ideas of wireless communication and remote surveillance are accomplished or apply those concepts in a new way.” Therefore, the court held the patents do not satisfy the Alice framework and recite patent ineligible subject matter.
Lessons for Practice
Like Fast 101, this case illustrates that “the use of ‘a generic computer to perform generic computer functions’ does not provide the requisite inventive concept” to establish patentability. Further, merely disclosing “features or results of the claimed abstract concepts…do[es] not take the [claim] beyond those concepts.” The decision in this case reinforces that, to establish patent eligibility under § 101, the claims and specification for a software application should be drafted towards how an improvement in computer functionality is achieved to show a technical solution to a technical problem