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Judge Forrest Provides Litigants Guidance on Applying Alice

On August 3, 2016, S.D.N.Y. District Judge Katherine B. Forrest denied Defendant Lowe’s Companies, Inc. (“Lowe’s”) motion to dismiss Iron Gate Security, Inc.’s (“Iron Gate”) patent infringement claim.

Iron Gate alleged that Lowe’s infringed U.S. Patent Nos. 6,288,641 and 7,203,693 (the “‘693 patent”), the latter by Lowe’s “Iris Smart Home Management System.”  The ‘693 patent is directed to “indexing multimedia data based on motion associated with a person or object.”  Lowe’s moved to dismiss the infringement claims as to the ‘693 patent, arguing that the patent claimed patent-ineligible subject matter under 35 U.S.C. § 101.

Judge Forrest applied the two-part test from Mayo and Alice to determine patent eligibility under § 101:  if a patent is directed to an abstract idea, it must contain an inventive concept sufficient to transform the abstract idea into patentable material.

Recognizing that Mayo, Alice, and their progeny provide few concrete boundaries as to what constitutes ineligible abstract ideas, Judge Forrest sought to provide guidance as to how courts should approach each step.  She explained that to resolve step one, “a court must define the idea, and then ask whether that idea, in all of its generic permutations, essentially constitutes the invention, or whether the invention is to accomplish the abstract idea in a particular way.”  Within this framework, Lowe’s argued “that the ‘693 patent is directed to the abstract idea of organizing data using an index so that newly obtained data can be associated with pre-existing data for purposes of subsequent retrieval.”  Judge Forrest disagreed, noting in particular that the ‘693 patent taught an improvement over prior art by allowing for “indexing to be accomplished contemporaneously with the capture of multimedia data, . . . providing benefits that include real-time cross-indexing of data and storage of relevant data alone . . . .”

To resolve step two, Judge Forrest explained that “the objective is to determine whether the claims provide a solution to a problem.”  In answering this question, Judge Forrest counsels that  courts answer the following questions:  “(1) Is there an improvement recited?; (2) Is there a benefit recited?; (3) Is something new recited?; (4) Does the patent have one or more particular applications?; [and] (5) What are the steps and limits to be followed in applying the invention?”  Noting that steps one and two often “have significant overlap,” Judge Forrest held that the ‘693 patent contained an inventive concept sufficient to satisfy § 101 even had she found it directed to an abstract idea.  In so holding, the court observed that “the claimed invention purports to improve upon existing multimedia data indexing techniques by allowing for indexing to occur contemporaneously to capture, which confers advantages that had not been achieved in the prior art.”

Case:  Iron Gate Sec., Inc. v. Lowe’s Cos., Inc., No. 15-cv-8814 (KBF) (S.D.N.Y. Aug. 3, 2016).  The patents-in-suit are U.S. Patent Nos. 6,288,641 and 7,203,693.