Inventive concept inquiry for patent-eligible subject matter requires more than identifying whether each claim element, by itself, was known in the art; an inventive concept may exist where a claim sets forth a non-conventional and non-generic arrangement of known, conventional pieces
Bascom Global Internet Services, Inc. v. AT&T Mobility LLC, No. 2015-1763 (Fed. Cir. June 27, 2016)
The patentee appealed the district court’s grant of the accused infringer’s motion to dismiss under Fed. R. Civ. P. 12(b)(6), finding that the claims on customizable Internet content filtering software were not patent-eligible under 35 U.S.C. § 101. The patentee argued that the claims contained an “inventive concept” in their ordered combination of limitations sufficient to satisfy the second step of the Supreme Court’s Alice test.
The Federal Circuit vacated and remanded the case to the district court, finding that while the claims were directed to an abstract idea of filtering content on the Internet, there was an inventive concept that provided a basis for patent eligibility. Specifically, as to the first step of the Alice test, the Federal Circuit agreed with the district court that filtering content is an abstract idea because it is a long-standing, well-known method of organizing human behavior. As to the second step, the Federal Circuit acknowledged that the claim limitations, taken individually, recite generic computer, network, and Internet components, none of which is inventive by itself. But the court determined the claims nevertheless included an inventive concept because the claims set forth a “non-conventional and non-generic arrangement of known, conventional pieces” that improved the technical functionality of Internet content filters.