In Bascom Glob. Internet Serv., Inc. v. AT&T Mobility LLC, No. 02015-1763 (Fed. Cir. June 27, 2016) the Federal Circuit reversed a finding that the claims of U.S. Patent 5,987,606 (the ‘606 patent) claim ineligible subject matter. Bascom, opinion at 2. In doing so, Bascom assists patent attorneys in validating the eligibility of software patents pursuant to Section 101. Moreover, Bascom supports the practical takeaways identified in an earlier Condo Roccia Koptiw LLP blog post: Breaking Down § 101 Barriers to Patentability for Software Related Patents ( http://www.condoroccia.com/patent-eligible-software-related-patents ).
The claims of the ‘606 patent, which operate in the context of the Internet, aim to improve prior techniques for filtering unsuitable content. The prior art disclosed filtering systems located on both the local computer and on a remote server. Both prior art solutions, however, had disadvantages: the former can be bypassed by a technologically savvy end user, while the latter does not allow for individualized filtration by the user. Attempting to overcome these disadvantages, the ‘606 patent claims a system that is located on a remote Internet Service Provider (“ISP”) server, which has the ability to associate content request to the network account and can apply customizable filtering schemes at the network account level.
In granting a motion to dismiss under Fed. R. Civ. P. 12(b)(6), the District Court concluded that the ‘606 patent was directed to the abstract idea of “filtering content” and that the claim limitations—local client computer, remote ISP server, Internet computer network, and controlled access network accounts—both individually and in combination, failed to amount to an “inventive concept.” Bascom, opinion at 9-10. According to the District Court, each claim limitation is a “well known, generic computer component,” and in combination, the limitations are established to practitioners and in the prior art. Id.
On appeal, the Federal Circuit agreed that the ’606 patent’s claims were directed at the abstract idea of filtering content and rejected the patentee’s argument that the claims were rejected to a more narrower filtering concept that incorporated claim limitations regarding filtering. Bascom, opinion at 13. But the Federal Circuit criticized the district court’s application of the second prong of the Alice test, finding it similar to an obviousness analysis and explaining that Section 101’s inventive concept analysis “requires more than recognizing that each element, by itself, was known in the art.” Bascom, opinion at 14-15. The Federal Circuit explained that Section 101’s “inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces.” Bascom, opinion at 15. The Federal Circuit found that the “inventive concept” of the ‘606 patent “is the installation of a filtering tool at a specific location, remote from the end-users, with customizable filtering features specific to each end user,” which has benefits over the prior art. Id. According to the Federal Circuit, the claims do not simply recite an abstract idea, (i.e. filtering content) or simply require that an abstract idea be performed on the Internet. Bascom, opinion at 16. Rather, the ‘606 patent provides a technical improvement over the prior art by describing the solution as a specific arrangement of elements so as not to preempt all ways of filtering content on the internet. Id.
After concluding that the claims were not directed to ineligible subject matter, the Court summarized its recent Alice applications. Bascom, opinion at 17-19. This portion of the opinion provides valuable insight on the considerations the Court deems relevant when analyzing patent eligibility under Section 101. The Federal Circuit distinguished cases that do not provide a “specific technical solution” and preempted all use of an abstract idea on the Internet or a generic computer. Previous decisions like DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014), Enfish LLC v. Microsoft Corp., (Fed. Cir. May 12, 2016), and TLI Comm. LLC v. A.V. Automotive, LLC, (Fed. Cir. May 17, 2016) demonstrate that software improvements can be patent eligible. Accordingly, in drafting patent claims and defending against a Section 101 attack, patentees may want to focus on the technical solution and advantages provided by the invention.
* Aakash is a second year law student from Temple University http://www.condoroccia.com/summer_associates