By Citius Minds

• Aug 24, 2016
• 4 Comments

Background – Eaton Corp. challenged Zimmers’ U.S. Patent No. 9,015,256 stating that its claims simply recite a well-known idea of sending alert notifications to multiple people. Accordingly, Eaton Corp. argued that the patent is directed at patent-ineligible subject matter under 35 U.S.C. § 101.

Technology Involved: The US’256 patent relates to providing emergency notification to multiple persons and/or geographic regions needed to be notified of pending emergencies or disasters such as a terrorist attack or severe weather incident. The invention primarily uses telephone, but can also use other communication devices such as computer networks, pagers, etc. The alert notification system utilizes computers connected via a network which include a database server that stores information and is used to assess alerts and deliver alert notifications to appropriate recipients. The alert notifications may be delivered via telephone, facsimile, electronic mail, or other electronic communications.

Trial Proceedings – The court conducted a 2-step Alice test to check the validity of US’256.

Step 1: Determining whether the asserted claims are directed to an abstract idea.

Finding: The court found the claims at issue were drawn to the abstract idea of providing alert notifications to multiple persons.  The court rejected Plaintiffs attempt to distinguish many of the post-Alice cases from the Federal Circuit and district courts by characterizing them as “business methods” cases, but courts have found many claims drawn to an abstract idea even if they involve technological concepts.

Step 2: Determining the presence of “inventive concept” i.e., an element or combination of elements sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the abstract idea itself.

Finding: The Court found that the claims involved a database, a user profile and a communication medium, which are deemed to be all generic computer elements. Plaintiffs also contended that there were specific limitations in the claims that transform it into an inventive concept, they being, types of alert origination, threat identification, and messages, as well as the criteria used in forwarding messages and selecting recipients. The court concluded that these limitations were insufficient to transform the abstract idea into an inventive concept.

Conclusion: Defendant Eaton Corp., Inc.’s Motion for Judgement on the Pleadings was GRANTED as the Plaintiffs failed to specify non-generic computer elements or additional, non-routine steps that transform the patent into an inventive concept that ‘overcome[s] a problem specifically arising in the realm of computer networks.’ Plaintiffs’ Motion for Judgement on the Pleadings was DENIED and Plaintiffs’ Motion to Strike Defendants Unclean hands and Equitable Estoppel Defenses was DENIED AS MOOT.