Summary
Claims of US patent 6,998,997 were found to be patent eligible
subject matter under 35 USC 101 because they have physical and tangible
components that are directed to more than the performance of an abstract idea.
Comments
- A method that can be performed
by human thought alone is an abstract idea.
- Claims that effect an
improvement in another technology or technical field may be patent eligible.
Broad description of the invention
The ‘997 patent claims methods and systems that monitor the status
at a garage door or other movable barrier.
The remaining patents relate to connecting a movable barrier to an
automation system or alarm.
Characteristic Claim
The representative claims are:
1.
An apparatus comprising:
a
movable barrier operator including a controller for controlling movement of a moveable
barrier; and
a
network interface electronically connected to the controller for connecting the
controller to a network;
wherein
the network interface responds to requests received on the network by sending a
status of the movable barrier over the network and;
wherein the network interface
receives a status change request from the network and the controller responds
to the status change request by moving the barrier.
2. A method for communicating
between a peripheral alarm system and a movable barrier operator controlling
movement of a movable barrier, the method comprising:
providing a secure encrypted
wireless communication link between the movable barrier operator and the
peripheral alarm system;
effecting at least one encrypted
wireless information communication from the movable barrier operator to the
peripheral alarm system using the secure encrypted wireless communication link;
and
performing a peripheral alarm system
action in response to the encrypted wireless information communication from the
movable barrier operator to the peripheral alarm system,
wherein the moveable barrier
operator is configured to receive secure encrypted signals from a user input
via a remotely located user interface and wherein effecting the at least one
encrypted wireless information communication further comprises providing an
instruction from the movable barrier operator to the peripheral alarm system
for the peripheral alarm system to take an action, and wherein the method
further comprises the peripheral alarm system action providing an encrypted
wireless signal over the secure communication link to instruct the movable
barrier operator to take an action.
Details
US Patent 6,998,997 is directed to
opening and closing a movable barrier, e.g., a garage door, a gate, a door, or
a window, by sending status signals and requests over a computer network, e.g.,
the Internet. (Id., col.1:44-67; col.2:35-38.) The claimed apparatus and
methods of the `977 Patent respond to "a need for a monitoring system for
a movable barrier which can solve the problems." (Id.,
col.1:38-39.) The specification details the problem— generally due to human
error—solved by the `977 Patent when "a movable barrier may be left open
when the user intended that it be closed." (Id., col.1:24-25.) In
particular, the specification discloses apparatus and methods for monitoring
the status of a garage door or other movable barrier. (Id.,
col.3:54-61.) The status can then be checked over the Internet using a standard
"web enabled cellular telephone or PDA." (Id.)
The system disclosed in the `977
Patent adds network connectivity to movable barrier operators which can then
allow a variety of remote devices, such as smartphones, to obtain the status of
the door and open or close the door remotely. (Id., col.4:54-58.)
The remaining four patents asserted
against Nortek are related and entitled "Alarm System Interaction with a
Movable Barrier Operator Method and Apparatus" (the "Alarm System
Patents").
The Alarm System Patents generally
describe connecting a movable barrier, e.g., a garage door opener, to a home or
business alarm or automation system to carry out a number of functions and are
each assigned to Chamberlain. (See R.54-5, at 1; R.54-4, at 1; R.54-3, at 1;
R.54-2, at 1.) Figure 2 of the Alarm System Patents depicts how the
"movable barrier operator 23" connects to a special "secure
communication link interface 22" via a "secure communication link
24," and then to an "alarm system controller 21"The secure
communication link of the Alarm System Patents can communicate signals from the
garage door opener to the security system (e.g., indicating whether the door is
open or closed), and from the security system to the garage door opener (e.g.,
to open or close the door). (Id., col.2:45-52, 3:38-41.) The secure
communication link prevents outsiders from compromising the system, such as by
surreptitiously opening a closed garage door, or by falsely reporting to a user
that the door is closed when it is actually open. (See id., col.5:6-41.) The
Alarm System Patents identify benefits of the claimed integration as including
delaying the actuation time for the alarm system until after the garage door
has closed (id., col.2:40-51), disarming the alarm system upon opening
of the garage door (id., col.4:22-32), and detecting an unauthorized
opening of the garage door and providing a signal to a peripheral alarm system
(id., col.5:7-19).
Section 101 of the Patent Act
defines the subject matter eligible for patent protection and provides:
Whoever invents or discovers any new
and useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof, may obtain a patent therefor, subject to the
conditions and requirements of this title.
35 U.S.C § 101. For over 150 years,
the Supreme Court has "held that this provision contains an important
implicit exception: Laws of nature, natural phenomena, and abstract ideas are
not patentable." Alice Corp. Pty. Ltd. V. CLS Bank
Int'l, ___ U.S.
___, 134 S.Ct. 2347, 2358, 189 L.Ed.2d 296 (2014) (citing Association for Molecular Pathology
v. Myriad Genetics, Inc., 569 U.S. ___, ___, 133 S.Ct. 2107, 2116, 186 L.Ed.2d 124 (2013)).
The concerns of pre-emption drive
this exclusionary principle. See Alice, 134 S.Ct. at 2354 (citing Bilski v. Kappos, 561 U.S. 593, 612, 130 S.Ct. 3218,
3231, 177 L.Ed.2d 792 (2010)) (explaining how upholding the patent
"would pre-empt use of this approach in all fields, and would effectively
grant a monopoly over an abstract idea"). The Supreme Court has repeatedly
emphasized the concern for inhibiting "further discovery by improperly
tying up the future use of these building blocks of human ingenuity." Id.
at 2354 (citing Mayo Collaborative Servs. v.
Prometheus Labs, Inc., 566 U.S. ___, 132 S.Ct. 1289, 1301, 182 L.Ed.2d 321 (2012) (citations omitted)). This
preemptive concern is construed carefully, however, "lest it swallow all
of patent law." Id. (citing Mayo, 566 U.S. at ___, 132 S.Ct. at 1293-94). Patent claims that include an
abstract concept are not deemed ineligible on that basis alone. See id.
(citing Diamond v. Diehr, 450 U.S. 175, 187, 101 S.Ct. 1048,
1057, 67 L.Ed.2d 155 (1981)). Indeed, inventions that are "applications of such concepts to a
new and useful end ... remain eligible for patent protection." Id.
(citing Gottschalk v. Benson, 409 U.S. 63, 67, 93 S.Ct. 253, 255,
34 L.Ed. 2d 273 (1972)). "Accordingly, in applying the § 101 exception, [courts] must
distinguish between patents that claim the building blocks of human ingenuity
and those that integrate the building blocks into something more, thereby
transforming them into a patent-eligible invention." Id.
(quotations and citations omitted).
The Supreme Court has also
recognized, however, that "too broad an interpretation of this
exclusionary principle could eviscerate patent law." Mayo, 132 S.Ct. at 1293; see also Alice, 134 S.Ct. at 2354. "For all inventions at some
level embody, use, reflect, rest upon, or apply laws of nature, natural
phenomena, or abstract ideas." Id. Accordingly, the Supreme Court
has explained that "an application of a law of nature or
mathematical formula to a known structure or process may well be deserving of
patent protection." Diehr, 450 U.S. at 187; see also Funk Bros. Seed Co. v. Kalo
Inoculant Co., 333
U.S. 127, 130 (1948) ("If there is to be invention from [a discovery of a law of
nature], it must come from the application of the law of nature to a new and
useful end.") (internal quotation marks omitted).
Keeping this balance in mind, the
Supreme Court has established a two-step framework to guide lower courts in
distinguishing between "those patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts." Alice, 134 S.Ct. at 2355; Mayo, 132 S.Ct. at 1294, 1296-98. First, courts must "determine
whether the claims at issue are directed to one of those patent-ineligible
concepts." Alice, 134 S.Ct. at 2355 (citing Mayo, 132 S.Ct. at 1296-97). If the claims are directed to a patent-ineligible
concept, then courts must conduct an analysis to search for the "inventive
concept"—"i.e., an element or combination of elements that is
`sufficient to ensure that the patent in practice amounts to significantly more
than a patent upon the ineligible concept itself." Id. (citing Mayo, 132 S.Ct. at 1294). In doing so, the court must ask
"what else is there in the claims before [it]?" and must
"consider the elements of each claim both individually and `as an ordered
combination' to determine whether the additional elements `transform the nature
of the claim' into a patent-eligible application." Id. (citing Mayo, 132 S.Ct. at 1298, 1297).
The claims of the `977 Patent are
directed to apparatus and methods for opening and closing a door (or other
movable barrier) after detecting and transmitting a message of the status of
the door—as either open or closed. This claimed process for monitoring and
controlling the operator of a movable barrier (i.e., facilitating the closing
and opening of a door) constitutes a category of statutory subject matter under
35 U.S.C. § 101. See 35 U.S.C. § 101 ("Whoever invents ... process,
machine, manufacture, or composition of matter ... may obtain a patent thereof
..."). The question remains, however, whether this process is directed to
an exception— a law of nature, natural phenomena, or abstract idea. See Alice, 134 S.Ct. at 2354 (explaining that while the scope of
Section 101 is broad, there is an "important implicit exception [to it]:
[l]aws of nature, natural phenomena, and abstract ideas are not
patentable"). Defendant argues that the `977 Patent is an exception to
patent-eligibility because it is directed to an abstract idea. As such, the
Court focuses its analysis under Alice to first address whether the `977
Patent claims are directed to the patent-ineligible concept of an abstract idea
and if so, whether those claims include an inventive concept. See id. at
2355 (citations omitted).
Defendant presents a very brief
argument in support of its contention that the `977 Patent claims are directed
to an abstract concept. Specifically, Defendant argues that the "movable
barrier" claims—directed to opening and closing a door—are "as old as
civilization." R.54, at 10 ("Houses, gates, castles, and city walls
have had `movable barriers' for as long as humans have built dwellings.")
Plaintiff responds that the `977 Patent claims are directed to real-world,
physical components: "a movable barrier operator (e.g., a garage
door opener) and a network interface connected to a controller of the garage
door opener to connect the garage door opener to a network." (R.58, at 6.)
Plaintiff further asserts that the `977 Patent claims are directed to
categories of invention that are patent eligible. Namely, an invention that
improves the operation of a computer system and an invention that uses a
computer to operate something that would be on its own, patent-eligible. (R.58,
at 7.)
An idea is abstract if it has
"no particular concrete or tangible form." Ultramercial, 772
F.2d at 715; see also In re TLI Commc'ns., 2015 WL 627858, at *8 (An
idea is abstract if it "describes a scheme or concept not tied to a
particular concrete application"). Although the "precise contours of
the `abstract ideas' category" were not delimited in Alice, the
Supreme Court and the Federal Circuit have provided some important principles
that are instructive here. Namely, the Supreme Court has instructed that
mathematical algorithms and fundamental economic and conventional business
practices are abstract ideas. See DDR Holdings, LLC v. Hotels.com LP, 773 F.3d 1245, 1256 (Fed. Cir.
2014) (citing
Benson, 409 U.S. at 64, 93 S.Ct. 253 (finding mathematical algorithms
patent ineligible); Bilski, 561 U.S. at 611 (finding the "fundamental
economic practice" of hedging to be patent ineligible); Alice, 134 S.Ct. at 2356 (same for intermediated
settlement)). In addition, claims that "simply instruct the practitioner
to implement the abstract idea of intermediated settlement on a generic
computer" are also abstract. DDR Holdings, 773 F.3d at 1256 (citing Alice, 134 S.Ct. at 2359); see also Ultramercial, 772 F.3d at 715-16 (finding claims using advertising
as a currency as applied to the particular technological environment of the
Internet merely recited an abstract idea); BuySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir.
2014)
(finding claims patent ineligible that did nothing more than implement the
abstract idea of creating a "transaction performance guaranty" over a
network); Accenture Global Servs., GMbH v.
Guidewire Software, Inc., 728 F.3d 1336, 1344-45 (Fed. Cir. 2013) (finding claims patent ineligible
that merely recited "generalized software components arranged to implement
an abstract concept on a computer"); Bancorp Servs., LLC v. Sun Life
Assur. Co. of Canada (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012) (finding claims patent ineligible that recited
the use of a computer to implement the abstract idea of managing a stable-value
protected life insurance policy). The claims at issue in the above cases
"were recited too broadly and generically to be considered sufficiently
specific and meaningful applications of their underlying abstract ideas ...
[and] in substance were directed to nothing more than the performance of an
abstract business practice on the Internet or using a conventional
computer." DDR Holdings, 773 F.3d at 1256. These type of claims are not
patent-eligible. Id.
The `977 Patent claims do not fall
within the contours of an abstract idea or patent-ineligible computer
implementation of an abstract idea as they have physical and tangible
components that are directed to more than performance of an abstract idea. See
id. The `977 Patent claims use a computer network interface to facilitate
communication between the movable barrier (e.g., a garage door) and a
controller or operator that controls movement of the garage door in response to
a status check or a status change request received on the network interface.
Figure 2 of the Alarm System Patents, for example, illustrates a movable
barrier operator for automatically opening and closing a barrier and depicts a
garage door, guide rails, a ceiling, a wall, a power drive unit, an integrated
drive rail, an operator arm, a trolley, a push button control unit, electrical
conductors, network interface, a remote control transmitter, and an auxiliary
power drive. (See R.54-5, Fig. 2.) These components are connected, in
part, by a network interface. (See id., Fig. 2; id., Fig. 3.) The
`977 Patent claims mirror the concept depicted by the Figures—physical and
tangible components directed to performance of more than an abstract idea.
Claim 1 of the `977 Patent, for example, is directed to an apparatus that has
two components: a network interface and a movable barrier operator—which
includes a controller for controlling movement of a movable barrier. (See
R.54-1, col.5:5-15.) Claim 22 is also directed to an apparatus that has a
network interface, a barrier status monitor coupled to a movable barrier, and a
controller coupled to both the network interface and the movable barrier. (See
id., col.6:27-39.) Claim 12 is directed to a method for checking the status
of a movable barrier that includes the use of a barrier movement operator for
controlling the movement of the barrier in response to a status change request.
(Id., col.5:38-col.6:4.) The steps of Claim 12 include receiving a
movable barrier status request (from a network client), determining the status
of the movable barrier, sending a status over the network in response to the
network client's movable barrier status request. (Id.)
The `977 Patent claims are not
directed to apparatus and methods that are capable of being "performed
mentally" nor are they the "equivalent of human mental work." See
CyberSource Corp. v. Retail
Decisions, Inc.,
654 F.3d 1366, 1373 (Fed. Cir. 2011) (explaining that a "method that can be
performed by human thought alone" is an abstract idea). In short, the `977
Patent claims are directed to opening and closing a movable barrier (e.g.,
garage door) using a computer network for communication between the monitor or
operator (including a controller), and movable barrier. Indeed, Defendant
understands the claims in this same manner. See R.54, at 1 ("The
`977 Patent ... describes the idea of opening and closing a garage door or
other "movable barrier" over the Internet"); id., at 10
("the claims are all directed to opening and closing a door"); R.59,
at 5 ("Claim 1 narrows the abstract idea of moving a movable barrier
..."); see also id., at 2 ("The Claims Are Directed to the
Abstract Idea of Opening and Closing a Door" ... "The `977 claims,
with the network and controller limitations stripped away, is [sic] directed to
moving a barrier. Or, more colloquially, opening and closing a door").
Despite agreeing that the claim is directed to real-work, physical opening and
closing of a door, Defendant argues this is an abstract idea. The Court
disagrees. Opening and closing—moving— a movable barrier in response to signals
as to that barrier's status is not an abstract idea. Monitoring the status of
an open or closed movable barrier when the inquiring party is not in visual
proximity of the movable barrier is not an abstract idea. An idea is abstract
if it has "no particular concrete or tangible form." Ultramercial, 772 F.3d at 715. The `977 Patent claims have a
clear concrete and tangible form in that they are directed to monitoring and
opening and closing a movable barrier—a particular tangible form, e.g., a
garage door, gate, door, or window.
The exemplary cases upon which
Defendant relies (see R.54, at 8, n.3) do not change the fact that the
claims at issue here, are directed to a fundamental concept that, unlike those
recited in the exemplary cases, is more than an abstract idea—more than a
mental process. In Digitech Image Techs., LLC v. Elecs.
for Imaging, Inc.,
758 F.3d 1344, 1351 (Fed. Cir. 2014), the Federal Circuit affirmed summary judgment
of invalidity under Section 101 for claims directed to a process of taking two
data sets and combining them into a single data set. In finding the claims invalid,
the Federal Circuit explicitly noted that the claim "recited an ineligible
abstract process of gathering and combining data that does not require input
from a physical device." Id., 758 F.3d at 1351. Furthermore, it noted
"nothing in the claim language expressly ties the method to an image
processor" as the claim "generically recites a process of combining
two data sets into a data profile; it does not claim the processor's use of
that profile in the capturing, transforming, or rendering of a digital
image." Id. Unlike the Digitech Image patent claims, the
`977 Patent claims are explicitly tied to "a movable barrier operator
including a controller for controlling movement of a moveable barrier."
(R.54-1, col.5:5-15.) The detection of the movable barrier's status and
relaying of that status over the communication network to the various
integrated physical components renders the claimed invention more than an
abstract idea because it provides a "concrete and tangible form." See
Ultramercial, 772 F.3d at 715.
In addition, the claims "effect
an improvement in [another] technology or technical field." See Alice,
134 S.Ct. at 2539. The `977 Patent claims are not directed to a method for
organizing human activity or computerizing a long-standing commercial practice.
Rather, the claims are directed to a garage door opener and a network—the use
of a computer in conjunction with a machine in a system. Defendant does not
argue that a garage door opener, alone, is patent ineligible. The `977 Patent's
invention improves the technology or technical field by integration of a garage
door opener and a network. Absent the integration, the garage door opener was
limited. With the integration, the garage door opener can do new things like
provide for remote monitoring and control of the garage door opener. The
integration of the computer with the garage door opener, therefore, improves
the technical field of a generic garage door and garage door opener.
In the single paragraph of
Defendant's opening brief asserting the `977 Patent claims are directed to an
abstract concept, Defendant states: "[o]pening and closing a `movable
barrier,' of course, is as old as civilization. Houses, gates, castles, and
city walls have had `movable barriers' for as long as humans have built dwellings."
(R.54, at 10.) Defendant's argument, however, treads too closely to allegations
of novelty and obviousness. While it may be true that ancient civilizations
used—and even, opened and closed—movable barriers, that analysis is more
appropriately addressed as a question of what constitutes the prior art and
whether the `977 Patent claims hold any novelty over the teachings of the prior
art. See Diehr, 450 U.S. at 190 ("The question therefore of
whether a particular invention is novel is `wholly apart from whether the
invention falls into a category of statutory subject matter'"); accord.
Trading Techs. Int'l, Inc. v. CQG, Inc., No.
05-CV-4811, 2015 WL 774655, at *5 (N.D. Ill. Feb. 24, 2015) ("The inventive concept"
step of the Alice analysis requires something different than pre-AIA §§
102 and 103.")
Accordingly, the `977 Patent
claims—directed to opening and closing a movable barrier via communication over
a computer network—encompass patent eligible subject matter and do not claim an
abstract, mental process. The analysis under Alice consequently comes to
an end.
Although the `977 Patent claims are
not directed to an abstract idea, as explained above, even if the Court found
the concept of opening and closing a door to be an abstract idea—as Defendant
asserts—the `977 Patent claims would still clear the hurdle of § 101 patent
eligibility because the claims include an inventive concept. The second step of
the Alice framework requires the Court to determine whether a
claim—found to be directed to an abstract idea— includes "additional
elements" that transform the nature of the claim into something
"significantly more" than the ineligible subject matter. See Alice, 134 S.Ct. at 2355. In doing so, the Court must ask
"what else is there in the claims before [it]?" and must
"consider the elements of each claim both individually and `as an ordered
combination' to determine whether the additional elements `transform the nature
of the claim' into a patent-eligible application." Alice, 134 S.Ct. at 2355 (citing Mayo, 132 S.Ct. at 1298, 1297). The simple addition of using the
internet in conjunction with an abstract idea is not an "inventive
concept." Ultramercial, 772 F.3d at 716 ("the use of the Internet is
not sufficient to save otherwise abstract claims from ineligibility under §
101"); Content Extraction, 776 F.3d at 1348 ("[t]here is no `inventive
concept' in [the plaintiff's] use of a generic scanner and computer to perform
well-understood, routine, and conventional activities commonly used in the
industry").
The `977 Patent claims include
additional elements that—considered individually and in combination—transform
the nature of the claim into something significantly more than the idea of
opening and closing a movable barrier. Defendant asserts that the `977 Patent
claims "simply recite[] checking the status of a door, and then opening or
closing that door, over a generic computer network." (R.54, at 10.) This
interpretation, however, is an oversimplification of the `977 Patent claims.
Claim 1, for example, is an apparatus that in addition to using a computer
network, uses a movable barrier operator which is connected to the network and
used for automatically opening and closing a barrier (R.54-1, col.2:38-40.)
Figure 2 of the `977 Patent depicts one embodiment of a movable barrier
operator, which includes the garage door, guide rails, the fixtures of the
ceiling and wall of the garage, a power drive unit, an integrated drive rail,
an operator arm, a trolley, a push button control unit, electrical conductors,
a remote control transmitter and an auxiliary power drive. (See R.54-1,
col.2:38-col.3:35.) The specification and the claims, therefore, describe a
movable barrier operator that has multiple components—more than the simple
addition of a generic computer to check the status of a door and then open or
close that door. Defendant ignores the garage door opener and controller, as
well as ignoring the requirement for the network interface of the `977 Patent
claims to be one that must connect the garage door opener to the network—a
particular type of interface. The additional elements included in the `977
Patent claims provide an inventive concept beyond opening and closing a door. See
e.g., Fairfield Indus., Inc. v. Wireless Seismic, Inc., No. 4:14-CV-2972,
2014 WL 7342525, at *5-6 (S.D. Tex. Dec. 23, 2014) (finding claims to a method
of data transmission that includes the additional elements of acquisition units
to receive and transmit data from other acquisition units to contain an
inventive concept and minimize the risk of preemption).
Although the
machine-or-transformation test is not the sole test governing a Section 101
analyses, it can provide a "useful clue" in the second step of the Alice
framework. Bancorp Servs., 687 F.3d at 1278 (citing Bilski, 561 U.S. at 604) ("[W]hile not the sole test
for deciding whether an invention is a patent-eligible `process,'" the
machine-or-transformation test "remains a `useful and important clue, an
investigative tool, for determining whether some claimed inventions are
processes under § 101"). The Supreme Court has acknowledged that the
machine-or-transformation test "may well provide a sufficient basis for
evaluating processes similar to those in the Industrial Age—for example,
inventions grounded in a physical or other tangible form." Bilski, 561 U.S. at 605. Here, application of the
machine-or-transformation test confirms the outcome reached by the Court. A
claimed process can be patent-eligible under § 101 if: "(1) it is tied to
a particular machine or apparatus, or (2) it transforms a particular article
into a different state or thing." In re Bilski, 545 F.3d 943, 954 (Fed. Cir. 2008)
(en banc), aff'd,
Bilski, 561 U.S. 593. In addition to being tied to a
network and network interface, the claims of the `977 Patent are tied to a
particular machine or apparatus. In particular, the claims are tied to a
movable barrier operator that includes a controller that can control movement
of the movable barrier (e.g., a garage door). This is not a claimed method or
apparatus that can be performed or function without its machine components.
Instead, the use of the movable barrier and controller are essential to the
operation of the claimed methods. See SiRF Tech., Inc. v. Int'l Trade
Comm'n, 601 F.3d
1319, 1333 (Fed. Cir. 2010) (finding a claimed GPS receiver to satisfy the
machine-or-transformation test because it "played a significant part in
permitting the claimed method to be performed" and put a meaningful limit
on the scope of the claim). This connection, therefore, satisfies the machine
prong of the machine-or-transformation test. The `977 Patent claims also
satisfy the transformation prong of the test, as the controller responds to the
status change request by moving the barrier e.g., from an open to a closed
position—thereby transforming the state of the movable barrier. See Bilski, 561 U.S. at 600 (citations omitted) ("A
claimed process is surely patent-eligible under § 101 if: (1) it is tied to a
particular machine or apparatus, or (2) it transforms a particular
article into a different state or thing").
Furthermore, this implementation of
the idea of opening and closing a door—limited to the additional use of a
movable barrier operator and a controller—does not preempt every technique for
opening and closing a door. In particular, the claimed implementation is
limited to a system that can identify the status of the door and change that
status over a network. See R.54-1, col.5:5-15 (claim limitations
reciting "responds to requests received on the network by sending a status
of the movable barrier over the network" and "receives a status
change request from the network[,] and the controller responds to the status
change request by moving the barrier"). The `977 Patent claims directed to
the opening and closing of a door tied to a movable barrier operator and
controller are patent eligible.[3]
Defendant argues that the Alarm
System Patents fail the Alice test because they are directed to an
abstract idea—integrating an alarm system and a movable barrier operator to
permit communication between the two. Defendant further argues that the Alarm
System Patents fail to add an inventive concept. Plaintiff replies that the
Alarm System Patents' claims are not directed to an abstract idea because they
are not methods of organizing human activity or carrying out long-recognized
commercial activity. Instead, Plaintiff contends that the `977 Patent claims
are directed to methods and processes that have physical, real-world methods
that use a machine and system, and are not about commerce or mental thought. As
with the `977 Patent, because Defendant argues whether the Alarm System Patents
are directed to an abstract idea, the Court focuses its analysis under Alice
on first addressing whether the Alarm System Patents' claims are directed to
the patent-ineligible concept of an abstract idea and if so, whether those
claims include an inventive concept. See Alice, 134 S.Ct. at 2355 (citations omitted).
The Alarm System Patents are
directed to monitoring the status of a movable barrier in such a way that a
change in that status can set off an alarm or adjust the timing of an alarm
disarmament or actuation. The claims of the Alarm System Patents—like those of the
'977 Patent—include a limitation to a movable barrier operator that is
configured to control movement of a movable barrier. (See e.g., R.54-2
(claims 1, 4, 8, 12, 15, and 21); R.54-3 (claims 1, 8, 17); R.54-4 (claims 1,
6, 11, 12, 16, 19, 21); R.54-5 (claims 1, 3, 11); see also R.54-5 (claim
22) & R.54-5 (claim 11) (directed to a garage door opener controlling
movement of a garage door).) The various embodiments of the Alarm System
Patents include "a secure communication link between a movable barrier operator
and a peripheral alarm system ... [that effects] at least one communication
between these elements using that secure communication link." (R.54-2,
col.2:37-42.)
The claimed alarm system connected
to a movable barrier operator falls within the realm of patent-eligible subject
matter. The claims are directed to movable barrier operators and security
systems that, individually, are the sort of mechanical and electrical systems
that are patent-eligible. Indeed, the claimed methods of the Alarm System Patents
could not be performed without the use of a movable barrier operator that
controls a movable barrier in communication with an alarm system. This vital
connection to the mechanical and electrical elements of the claim renders the
claims at issue patent-eligible. See SiRF Tech., 601 F.3d at 1333 (finding claims tied to a GPS
receiver to be patent eligible because the methods could not be performed
without a GPS receiver because it would be impossible to generate pseudoranges
or to determine the position of the GPS receiver whose position is the precise
goal of the claims). The claims integrate communication between two real-world
systems that "can comprise an instruction to the movable barrier operator
regarding subsequent movement of a movable barrier as is controlled, at least
in part, by the movable barrier operator." (R.54-4, col.3:28-31; see
also id., col.4:50-55 (describing the communication between the alarm
system controller and the movable barrier operate to provide "a specific
instruction to illuminate one or more lights, to move the movable barrier to a
particular position, to maintain a present position of the movable barrier, and
so forth".) The claims require input from the physical devices of the
movable barrier, the movable barrier operator and the alarm system controller,
and the language of the claims expressly ties the methods and systems to at
least one of these components. See Digitech Image Techs., 758 F.3d at 1351 (finding claims patent ineligible
because they recited an "abstract process of gathering and combining data
that does not require input from a physical device").
Furthermore, the Alarm System
Patents' claims improve the operation of each of the basic components—the
garage door opener and the security system. In particular, the movable barrier
operator, e.g., the garage door opener, can access the functionality of the
alarm security system without illicit interference. Similarly, the security
system's capabilities are expanded to include monitoring and controlling the
garage door opener. The improvement of providing communication between these
basic components—individually, patent-eligible—also uses a computer with
methods or systems that would otherwise be patent eligible absent the
computers. See Alice, 134 S.Ct. at 2359-60.
The Alarm System Patents' claimed
alarm system is more than an abstract idea as the patents disclose the
monitoring of process variables and the means of setting off an alarm or
adjusting an alarm system. Specifically, the Alarm System Patents disclose the
means for setting an alarm and adjusting the alarm system to delay actuation
time and disarmament of the alarm system upon opening of the garage door. (See
e.g., R.54-2, col.2:43-64.) These additional variables in the disclosure of
the Alarm System Patents anchor the claimed subject matter to a particular
tangible and concrete form, rendering it patent-eligible. See Ultramercial, 772 F.3d at 715. The Supreme Court's reasoning in Parker v. Flook, 437 U.S. 584, 98 S.Ct. 2522, 57
L.Ed.2d 451 (1978), is instructive here. In Parker, the Supreme Court found the
claims patent-ineligible because they sought to protect a formula for
computation of a number, an updated "alarm limit" calculated if certain
variables were known, but did not provide any additional explanation as to how
the variables were to be determined. See Diamond, 450 U.S. at 186-87 (citing Parker, 437 U.S. at 586) (finding claims patent ineligible,
in part, because they failed to explain how to determine variables needed to
calculate an updated alarm limit and did not purport "to contain any
disclosure relating to the chemical processes at work, the monitoring of
process variables, or the means of setting off an alarm or adjusting an alarm
system")). The Alarm System Patents, unlike the alarm limit calculations
in Parker, contain tangible components of the movable barrier operator
and alarm system. In addition, the specification discloses use of the network
to monitor and communicate regarding variables linked to the alarm system,
e.g., open or closed status of the garage door.
Accordingly, the Alarm System
Patents—directed to integrating an alarm system and a movable barrier to
include communication between the two—do not claim an abstract idea and are
patent-eligible subject matter. The analysis under Alice, therefore,
ends.
Although the `977 Patent claims are
not directed to an abstract idea, as explained above, even if the Court found
the concept of integrating an alarm system and a movable barrier operator to
permit communication between the two to be abstract, the Alarm System Patents'
claims would still clear the hurdle of § 101 patent eligibility because the
claims include an inventive concept.
As noted above, the second step of
the Alice framework requires the Court to determine whether a
claim—found to be directed to an abstract idea—includes "additional
elements" that transform the nature of the claim into something
"significantly more" than the ineligible subject matter. See Alice, 134 S.Ct. at 2355. In doing so, the Court must ask
"what else is there in the claims before [it]?" and must
"consider the elements of each claim both individually and `as an ordered
combination' to determine whether the additional elements `transform the nature
of the claim' into a patent-eligible application." Id. (citing Mayo, 132 S.Ct. at 1298, 1297). The simple addition of using the
internet in conjunction with an abstract idea is not an "inventive
concept." Ultramercial, 772 F.3d at 716 ("the use of the Internet is
not sufficient to save otherwise abstract claims from ineligibility under §
101"); see also Content Extraction, 776 F.3d at 1348.
The Alarm System Patents' claims
include additional elements that—considered individually and in
combination—transform the nature of the claims into something significantly
more than mere communication. Defendant's characterization of the claims as directed
to mere communication ignores the claims' specific ties to mechanical and
electrical devices—a movable barrier operator and an alarm system controller.
This connection is more than simply communication, as the claims rely on
particular input and commands to operate—for example, the claims address
particular commands that are to be relayed between the garage door opener
(e.g., a "movable barrier movement command"), and the action of
physically moving the garage door ("performing a movable barrier operator
action") in response to receiving a particular signal from the alarm
system. These and other additional commands and inputs of the claimed alarm
systems and methods transform any abstract concept of communication between the
two components into something significantly more than communication, rendering
it patent-eligible subject matter. See Alice, 134 S.Ct. at 2355 (explaining the inventive concept
as transforming the nature of the claim into something "significantly
more" than the ineligible subject matter).
In addition, inclusion of the
movable barrier operator and the alarm system satisfies the
machine-or-transformation test, further confirming the patent-eligible nature
of the claims. A claimed process can be patent-eligible under § 101 if:
"(1) it is tied to a particular machine or apparatus, or (2) it transforms
a particular article into a different state or thing." In re Bilski, 545 F.3d 943, 954 (Fed. Cir. 2008)
(en banc), aff'd,
Bilski, 561 U.S. 593. The claims of the Alarm System
Patents are tied to particular machines or apparatus—a movable barrier operator
that includes a controller that controls movement of the movable barrier (e.g.,
a garage door), and an alarm system controller. As with the `977 Patent claims,
these are not claimed methods or apparatus that can be performed or function
without their machine components. See SiRF Tech., 601 F.3d at 1333. Indeed, the claimed mechanical and
electrical parts (movable barrier operator, movable barrier, and alarm system)
and their ability to detect and respond to the status of the movable barrier
(e.g., by respectively, closing or opening) are central to the invention. This
connection to a combination of devices satisfies the machine prong of the
machine-or-transformation test and renders the subject matter patent-eligible. See
id. at 1332 (defining a "machine" as "a concrete thing,
consisting of parts, or of certain devices and combination of devices ... to
perform some function and produce a certain effect or result"); see
also In re Ferguson, 558 F.3d 1359, 1364 (Fed. Cir.
2009).
Furthermore, the integration of an
alarm system and a movable barrier operator to permit communication between the
two does not preempt every technique for the use of an alarm system in
connection with opening and closing a door. In particular, the claimed
implementation is limited to a system that can identify the status of the door
and respond to or change that status over a network. See e.g., R.54-5,
col.5:59-col.6:7 (claim limitations of "performing a peripheral alarm
system action in response to ... communication from the movable barrier
operator" and "the peripheral alarm system action ... instruct[s] the
movable barrier operator to take an action"). The Alarm System Patents'
claims directed to communication and response between an alarm system and a movable
barrier operator are patent eligible.[4]