Securus Technologies Inc v. Global TelLink Corporation
3:13-cv-03009
N.D. Tex.Nov 2, 2015Background
- Securus sued GTL for patent infringement; Securus’s infringement claims were later dismissed, and GTL asserted counterclaims alleging Securus infringed three GTL patents (the ‘359, ‘171, and ‘581 patents); GTL later withdrew claims as to the ‘581 patent.
- GTL owns the ‘359 patent (issued Aug. 1, 2006) directed to collecting and correlating information about inmate associations with security-threat groups and inmate call detail records to identify security-threat related call activity.
- GTL owns the ‘171 patent (issued May 2, 2006) directed to monitoring inmate communications, comparing those communications to employee/inmate information, and identifying possible inmate–employee fraternization, with a follow-up action if fraternization is indicated.
- Securus moved under Rule 12(c) for judgment on the pleadings seeking invalidation of the asserted claims under 35 U.S.C. § 101 as directed to non‑patentable subject matter.
- The court applied the two-step Alice/Mayo framework: (1) determine whether claims are directed to a judicial exception (abstract idea), and (2) if so, determine whether the claims add an "inventive concept" sufficient to transform the abstract idea into patent-eligible subject matter.
- The court concluded the asserted claims of the ‘359 and ‘171 patents are directed to the abstract idea of comparing information sets to find matches and lack an inventive concept, and therefore held the listed claims invalid and granted Securus’s motion.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Are the asserted claims directed to an abstract idea under § 101? | Claims merely implement an abstract activity of comparing data; not patent‑eligible. | Claims are concrete: they collect and generate useful security intelligence, not a mere abstract comparison. | Directed to an abstract idea (comparing information sets to match/determine relationships). |
| Do the claims contain an "inventive concept" that transforms the abstract idea into patentable subject matter? | No inventive concept; claims only recite data collection, storage, comparison, and routine actions. | Specification describes inventive intelligence-generation; limitation to prison security context and specific data sources supply inventive concept. | No inventive concept: claims stop at the abstract idea; dependent limitations are conventional and do not save eligibility. |
| Does limiting claims to prison‑security technology render an abstract idea patentable? | N/A (plaintiff's position implicitly: field limitation insufficient). | Field-of-use limitation to correctional facilities and security monitoring makes claims concrete and non‑monopolizing. | Field limitation does not render abstract idea patentable; still ineligible. |
| May the court rely on the specification to supply an inventive concept absent specific claim language? | Plaintiff: eligibility depends on claim language, not specification. | Defendant: specification shows the inventors conceived a concrete invention that should be treated as inventive. | Court: cannot rely on specification to rewrite claims; must assess claim language—specification cannot supply missing inventive concept. |
Key Cases Cited
- Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 134 S. Ct. 2347 (2014) (two‑step test for § 101 eligibility and requirement of an "inventive concept")
- Gottschalk v. Benson, 409 U.S. 63 (1972) (laws of nature, natural phenomena, and abstract ideas are not patentable)
- Bilski v. Kappos, 561 U.S. 593 (2010) (reinforces limits on patenting abstract ideas)
- Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014) (analysis of abstract-idea exceptions and conventional computer implementation)
- Doe v. MySpace, Inc., 528 F.3d 413 (5th Cir. 2008) (standard for Rule 12(c) judgment on the pleadings)