IP Law Daily ‘Method of Monitoring a Protected Space’ was ineligible under Section 101
Tuesday, February 12, 2019

‘Method of Monitoring a Protected Space’ was ineligible under Section 101

By Joseph Arshawsky, J.D.

The patented invention was directed to the abstract idea of providing an efficient means to collect and disseminate information about "protected spaces," such as computer rooms that need to be constantly monitored for conditions such as heat or humidity.

Alarm and security system provider ADT was entitled to summary judgment in its favor on a patent infringement claim brought against it by competing security company Specialized Monitoring Solutions (SMS), the federal district court in Marshall, Texas, has decided. The court invalidated all claims of a method patent held by SMS under 35 U.S.C. §101 for failure to recite patentable subject matter. On the first Alice step, the court found the claims directed to the abstract idea of collection, organization, analysis, and display of information. On the second Alice step, the court found a lack of an inventive concept rendering the claims patent-eligible (Specialized Monitoring Solutions, LLC v. ADT LLC, February 7, 2019, Bryson, W.).

Patent-in-suit. U.S. Patent No. 6,657,553 ("the ‘553 patent") is entitled "Method of Monitoring a Protected Space." The patent has three independent claims: 1, 19, and 35. The specification explains that the invention was intended to provide an efficient means for collecting and disseminating information about "protected spaces," such as computer rooms that need to be constantly monitored for conditions like heat and humidity. The invention provides for appropriate sensors to be placed in the protected spaces, so that the sensors can detect an event that needs to be reported, and the signals from the sensors can be coded into a packet message to be sent through the internet to a remote database. The data from the sensors is then stored securely in the database.

Abstract idea. ADT argued that the asserted claims of the ’553 patent "are directed to the abstract idea of collecting, organizing, storing, and disseminating sensor data" and so are directed to patent-ineligible subject matter. Several Section 101 cases from the Federal Circuit involved claims directed to the collection, organization, analysis, and display of information, and the appellate court had repeatedly held that such claims are directed to abstract ideas, as that term is used in the first step of the Alice test.

As for the limitation that specifies a database containing a plurality of secure storage areas, it is clear that the database is simply the location where the information is stored after being analyzed, according to the court. Consequently, the invention is not directed to an improvement in the functioning of a computer. Rather, it consists of using of a generic computer to aid processes that constitute abstract ideas.

To the extent that SMS argued that the database recited in the asserted claims of the ’553 patent was an improvement in database structure, ADT’s proffered evidence, unrebutted by SMS, established the contrary. Claim 1 of the ’553 patent recited the functional and abstract steps of "providing" a database with secure storage areas, "reserving" a subarea of each secure area for each type of data received, "detecting a signal event" from the protected space, "coding the signal event," "transferring the coded message" to the database, "determining" the type of signal event reported, "storing" the coded message in a secure area and subarea of the database, and "providing access to information of the coded message packet through an Internet connection between the manager and the database based upon" the manager’s password.

The claims did not recite technology improvements that helped perform those steps. In sum, the recited characteristics of the database do not render the claims non-abstract. The court therefore concluded that independent claims 1, 19, and 35 of the ’553 patent are directed to an abstract idea, as that term has been applied by the U.S. Supreme Court and the Federal Circuit in assessing patent-eligibility under Section 101.

Inventive concept. Turning to the second step of the Alice framework, SMS argued that even if its claims were directed to abstract ideas, they contained an "inventive concept" that rendered them patent-eligible. The "inventive concept" step requires the court to determine whether the claims recite an element or a combination of elements sufficient to ensure that the patent is directed to significantly more than the abstract idea itself.

The Federal Circuit had pointed out that "merely selecting information, by content or source, for collection, analysis, and display does nothing significant to differentiate a process from ordinary mental processes, whose implicit exclusion from §101 undergirds the information-based category of abstract ideas." The asserted claims recited no arguably inventive set of components, devices, techniques, or innovative programming, but merely provided for a particular manner of selecting and manipulating information. The claims did not require any non-conventional computer, network, or even a non-conventional and non-generic arrangement of known, conventional pieces. Rather, the claims merely called for performance of the claimed information collection, analysis, and display functions on a set of generic computer components and display devices performing conventional tasks for which they were designed.

Viewing the claims on a limitation-by-limitation basis, the court concluded that none of the limitations evinces an "inventive concept" sufficient to satisfy the second step of the Supreme Court’s Alice test. Moreover, viewing all limitations of each independent claim in combination, the court concluded that none of those claims satisfies that standard.

Reserving different portions of a database to receive and store different categories of entries—also known as the allocation of memory—is entirely conventional. "That is what computers do," said the court. Moreover, organizing and accessing records by creating an index-searchable database "includes longstanding conduct that existed well before the advent of computers and the Internet," and claims directed to such conduct have been held patent ineligible. The application of such conventional elements to a specific field, such as monitoring alarm systems for buildings, does not convert those conventional elements into an "inventive concept."

It is well established that patent-ineligible subject matter does not become patent-eligible merely by applying it in a particular technological environment. The combination of claim elements, stripped of their excess verbiage, merely described a method and apparatus for monitoring spaces that transmits alarm signals to a database where they are stored according to each protected space and each signal type, in a manner that enables a user with a password to retrieve signals pertaining to different signals and different spaces. Nothing in the specification or the claims suggests any specific inventive manner in which any of those functions, or the combination of those functions, can be performed.

This case is No. 2:17-cv-768-WCB.

Attorneys: Daniel Louis Schmid (Dinovo Price Ellwanger & Hardy LLP) for Specialized Monitoring Solutions, LLC. Michael Eric Zeliger (K&L Gates LLP) for ADT LLC d/b/a ADT Security Services.

Companies: Specialized Monitoring Solutions, LLC; ADT LLC d/b/a ADT Security Services

MainStory: TopStory Patent TechnologyInternet TexasNews

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