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Federal Circuit Patent Bulletin: BASCOM Global Internet Servs., Inc. v. AT&T Mobility LLC

June 27, 2016

“The inventive concept inquiry [under 35 U.S.C. § 101] requires more than recognizing that each claim element, by itself, was known in the art. [A]n inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces.”

On June 27, 2016, in BASCOM Global Internet Servs., Inc. v. AT&T Mobility LLC, the U.S. Court of Appeals for the Federal Circuit (Newman, O’Malley, Chen*) vacated and remanded the district court’s under Federal Rule of Civil Procedure Rule 12(b)(6) dismissal of BASCOM’s suit alleging that AT&T infringed U.S. Patent No. 5,987,606, which related to providing individually customizable filtering at the remote ISP server by taking advantage of the technical capability of certain communication networks. The Federal Circuit stated:

A patent may be obtained for “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” The Supreme Court has “long held that this provision contains an important implicit exception: Laws of nature, natural phenomena, and abstract ideas are not patentable.” The Supreme Court has also consistently held that § 101 provides a basis for a patentability/validity determination that is independent of—and on an equal footing with—any other statutory patentability provision. Courts may therefore dispose of patent-infringement claims under § 101 whenever procedurally appropriate. [T]he Supreme Court set forth a two-step analytical framework to identify patents that, in essence, claim nothing more than abstract ideas. The court must first “determine whether the claims at issue are directed to a patent-ineligible concept.” If so, the court must then “consider the elements of each claim both individually and ‘as an ordered combination’ to determine whether the additional elements ‘transform the nature of the claim’ into a patent-eligible application.”

The claims of the ’606 patent are directed to filtering content on the Internet. Specifically, claim 1 is directed to a “content filtering system for filtering content retrieved from an Internet computer network.” . . . We agree with the district court that filtering content is an abstract idea because it is a longstanding, well-known method of organizing human behavior, similar to concepts previously found to be abstract. . . .

The “inventive concept” may arise in one or more of the individual claim limitations or in the ordered combination of the limitations. An inventive concept that transforms the abstract idea into a patent-eligible invention must be significantly more than the abstract idea itself, and cannot simply be an instruction to implement or apply the abstract idea on a computer.

We agree with the district court that the limitations of the claims, taken individually, recite generic computer, network and Internet components, none of which is inventive by itself. BASCOM does not assert that it invented local computers, ISP servers, networks, network accounts, or filtering. Nor does the specification describe those elements as inventive.

However, we disagree with the district court’s analysis of the ordered combination of limitations. In light of Mayo and Alice, it is of course now standard for a § 101 inquiry to consider whether various claim elements simply recite “well-understood, routine, conventional activit[ies].” The district court’s analysis in this case, however, looks similar to an obviousness analysis under 35 U.S.C. § 103, except lacking an explanation of a reason to combine the limitations as claimed. The inventive concept inquiry requires more than recognizing that each claim element, by itself, was known in the art. As is the case here, an inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces.

The inventive concept described and claimed in 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. This design gives the filtering tool both the benefits of a filter on a local computer and the benefits of a filter on the ISP server. BASCOM explains that the inventive concept rests on taking advantage of the ability of at least some ISPs to identify individual accounts that communicate with the ISP server, and to associate a request for Internet content with a specific individual account. According to BASCOM, the inventive concept harnesses this technical feature of network technology in a filtering system by associating individual accounts with their own filtering scheme and elements while locating the filtering system on an ISP server. On this limited record, this specific method of filtering Internet content cannot be said, as a matter of law, to have been conventional or generic.

The claims do not merely recite the abstract idea of filtering content along with the requirement to perform it on the Internet, or to perform it on a set of generic computer components. Such claims would not contain an inventive concept. Nor do the claims preempt all ways of filtering content on the Internet; rather, they recite a specific, discrete implementation of the abstract idea of filtering content. Filtering content on the Internet was already a known concept, and the patent describes how its particular arrangement of elements is a technical improvement over prior art ways of filtering such content. [P]rior art filters were either susceptible to hacking and dependent on local hardware and software, or confined to an inflexible one­size-fits-all scheme. BASCOM asserts that the inventors recognized there could be a filter implementation versatile enough that it could be adapted to many different users’ preferences while also installed remotely in a single location. Thus, construed in favor of the nonmovant— BASCOM—the claims are “more than a drafting effort designed to monopolize the [abstract idea].” . . .

While the claims of the ’606 patent are directed to the abstract idea of filtering content, BASCOM has adequately alleged that the claims pass step two of Alice’s two-part framework. BASCOM has alleged that an inventive concept can be found in the ordered combination of claim limitations that transform the abstract idea of filtering content into a particular, practical application of that abstract idea. We find nothing on this record that refutes those allegations as a matter of law or justifies dismissal under Rule 12(b)(6). We therefore vacate the district court’s order granting AT&T’s motion to dismiss under FRCP 12(b)(6) and remand so that the case may proceed.