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Applied Capital, Inc. v. The ADT Corp.

United States District Court, D. New Mexico

August 7, 2019

APPLIED CAPITAL, INC., Plaintiff,
v.
THE ADT CORPORATION and ADT LLC, Defendants.

          MEMORANDUM AND ORDER

          Joseph F. Bataillon Senior United States District Judge

         This matter is before the Court on defendants ADT Corporation's and ADT LLC's (collectively “ADT”) motion for summary judgment on patent eligibility under 35 U.S.C. § 101, Doc. 123. This is an action for patent infringement involving security systems and, in particular, the monitoring of premises using a graphical floor plan. The plaintiff, Applied Capital, Inc. (“Applied”) asserts ADT infringes the following patent claims: claims 1-3, 6-9, and 11-15 of U.S. Patent No. 8, 378, 817 (the “'817 patent”) and claims 1-3, 6-9, 11-15, and 17 of U.S. Patent No. 9, 728, 082 (the “'082 patent”).

         ADT contends that all of the asserted claims in this case are invalid under 35 U.S.C. § 101, arguing that they are directed to an “abstract idea” that is not patent eligible under § 101. It argues the asserted claims are all directed to a series of information processing steps, including the collecting, analyzing, and dispatching of information concerning alarm or warning systems.

         The plaintiff contends the claims of the ACI Patents are directed to a specific way of providing users with graphical information concerning a monitored event in a premises-embodied by using dynamically-rendered, event-specific, graphical floor plan. The plaintiff argues the specific way of providing users with graphical information is explicit in the independent claims, all of which require providing (retrieving/providing) a graphical combination of (1) visual indicators layered on a map (i.e., “superimposed visual indicators”); (2) groups of images arranged so they are accessible through one another (i.e., “hierarchically organized graphical images”); and (3) images defined by vectors (i.e., “vector-based graphical images”).

         I. FACTS

         The '817 patent and '082 patent share the same title (Premises Monitoring System), the same inventor (Rodney Fox), and the same disclosure (the “Common Specification”). See Doc. No. 1-2, Ex. A, '817 patent at 14-21; Doc. No. 78-2, Amended Complaint, Ex. Q, '082 patent. The record shows three Common Specification of the patents incorporates by reference and claims priority to two provisional applications (SN6114798, filed on January 28, 2009 and SN61228044, filed on July 23, 2009) and incorporates an appendix (APPENDIX A) disclosing “iLinkx, ” a specific example of one embodiment of the disclosed invention. Doc. No. 102-2, Claim Construction Brief, Ex.1, '817 patent at 1:5-9; Ex. 2, '082 patent at 1:5-9. The '817 patent has one independent claim-claim 1; and the '082 patent has two independent claims-claims 1 and 17. Id. Independent claim 1 of the '817 patent recites:

         1. A method comprising:

receiving one or more signals containing a device identifier and a device condition from one or more remote alarm monitoring systems; retrieving enhanced information based on the device identifier and the device condition; determining one or more communication methods and communication destinations based on the device identifier and the device condition; and dispatching the enhanced information to the one or more communication destinations using the one or more communication methods; and wherein the retrieving enhanced information based on the device identifier and the device condition comprises retrieving images based on the device identifier and the device condition, the images comprising all of the members selected from the group consisting of superimposed visual indicators, hierarchically organized graphical images, and vector based graphical images.

Doc. 1-2, the '817 patent, at 18:45-63. Independent claim 1 of the '082 patent describes a “non-volatile and non-transient computer-readable medium comprising machine-executable code” performing steps identical to those of claim 1 of the '817 patent. Doc. 78-2, the '082 patent, at 19:6-25. Independent claim 17 of the '082 patent describes a “computerized system comprising a central monitoring system” performing steps identical to those of claim 1 of the '817 patent. Id. at 20:17-21:3, Doc. 78-2, the '082 Patent, at 20:55-21:3.

         Each independent claim requires providing (retrieving/dispatching) a specific combination of graphical elements associated with (based on) a monitored event (the device identifier and device condition received from a remote alarm monitoring system). Id. The graphical elements are explicitly recited: “superimposed visual indicators, ” “hierarchically organized graphical images, ” and “vector-based graphical images.” Id., Doc. 102-2, Ex. 1, 817 patent at 18:60-65. The claims also require providing these graphics to selected communication destinations using selected communication methods. Id. at 18:51-56.

         The Common Specification teaches retrieving superimposed visual indicators by “retriev[ing] . . . a floor plan having a superimposed icon illustrating device type and device position relative to the floor plan and superimposed indicators highlighting pathways[.]” See, e.g., Doc. 102-2, Ex. 1, '817 patent at 5:1-18. It describes such indicators as “customizable, blinkable, and/or color-codable” icons or designators “superimposed on a map, picture, floor plan, and/or site plan” to illustrate the position and type of devices and conditions. Id. at 5:9-18. It defines a hierarchically organized image as “any group of images arranged relative to . . . and/or accessible through one another” such as “a camera feed from a room of a device accessible from a floor plan accessible from a site plan accessible from a map.” Id. at 5:39-45. The Common Specification also states that such images would be “dynamic in their operation, ” allowing scaling “with no loss or degradation” and/or “magnification without degradation (e.g., to approximately 6600%), ” and could be transmitted “in .pdf format.” See Doc. 78-1, Amended Complaint, Ex. P, '817 patent, APPENDIX A at DOC. 75; Doc. 102-2, '817 patent at 5:55-62. Further, every part of the Common Specification emphasizes that such graphical elements are “tailored” to a particular event-i.e., retrieved “based on the device identifier and/or the device condition” in a signal received from a remote alarm monitoring system. See, e.g., Doc. 102-2, '817 patent at 5:1-6:2. In the Common Specification, all information dispatched is “device specific and not general in content.” Doc. 78-1, '817 patent, APPENDIX A at Doc. 75.

         Also, the Common Specification refers to the benefits of the invention over graphical presentation approaches in prior security systems. Doc. 102-2, '817 patent at 5:1-6:2. For example, embodiments of the invention support a “dynamic, ” “fun, ” “graphical file presentation approach” where images “shall be attached to an incoming alarm and linked in a hierarchy so navigation can be performed by the operator.” Doc. 78-1, Amended Complaint, Ex. 1, '817 patent, Ex. P, APPENDIX A at Doc. 36. The approach “shall enable the system to receive an alarm and automatically display a street map and/or subsequent graphics of the building, wing, floor, room, and finally to the device icon.” Id. The Common Specification describes support for “multiple hierarchical graphic images, ” “creating important instructions and/or images” and “provid[ing] the dispatchers with the most accurate and efficient method of understanding the physical situation of an event.” Id. Moreover, “[c]olor-coded alarms and custom audio/visual indicators enable instant recognition of the nature and/or severity of an event” and “[f]ull graphic capabilities enable the user to import graphic files to enhance the dispatcher's speed and accuracy.” Id. at Doc. 64.

         The graphical presentation approach of the invention provides recipients with the “most accurate and efficient method of understanding the physical situation of an event, ” and also reduces the file sizes, processing time, transmission time, and computer screen build times associated with prior attempts to provide colorgraphic displays to users. Id. at Doc. 36. The Common Specification states the “patent pending technology” “minimizes the actual file size while maintaining the colorgraphic integrity” and “further[s] enhanced notification by pinpointing the specific problem area, reflecting the condition on a colorgraphic image that could be printed, forwarded or archived for future reference in as little as a few seconds, ” allowing “enhanced notification, in a much shorter time period than conventional technology with a significant reduction in response time.” Id. at 4.

         The prosecution history shows the inventor amended the claims during the prosecution of the '817 patent to include combining the graphical elements, explaining “[t]he present invention provides a unique manner in which to provide useful information in a compact format to, for example, first responder personnel.” See Doc. 117-4, ...


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