In another decision applying the two-step framework for determining patent eligible subject matter laid out in Alice Corp. v. CLS Bank International, the U.S. Court of Appeals for the Federal Circuit addressed the patent eligibility of claims to an Internet content filtering system. In BASCOM Global Internet Services, Inc. v. AT&T Mobility LLC, the Federal Circuit held that BASCOM’s U.S. Patent 5,987,606 (“the ‘606 patent) was not invalid as a matter of law, vacated a district court’s order to dismiss, and remanded for further proceedings.
The ‘606 patent describes a content filtering system that blocks certain Internet content from end-users. In 1997 when the application that would issue as the ‘606 patent was filed, content filtering systems were implemented in either of two ways: at the local machine or at the remote ISP servers. Local filtering systems offered users the ability to create customized filtering criteria, but they were problematic because end-users could easily circumvent them and the web content databases had to be updated manually. On the other hand, the ISP-end solutions were more difficult to circumvent but required a single set of filtering criteria for all subscribers.
The ‘606 patent describes an invention that combines the advantages of both filtering tools while avoiding their drawbacks. The claimed system includes a filtering tool at the ISP servers to prevent users from easily circumventing the filters. Unlike then-conventional ISP-end systems, however, the invention provides customizable filtering by associating each network account to an individual filtering scheme. In other words, users can log on and customize their filters without having to maintain the content database on their local machines.
BASCOM sued AT&T for patent infringement in the U.S. District Court for the Northern District of Texas and, in response, AT&T filed a motion to dismiss contending that the ‘606 patent claims were not patent-eligible. In analyzing eligibility under 35 U.S.C. § 101, the district court applied the two-step Alice framework and held that the ‘606 patent claims failed both parts. That is, the claims were directed to an abstract idea and the limitations lacked an inventive concept.
The Federal Circuit agreed with the district court on the first step of the analysis. It found that the claims are directed to filtering content on the Internet and that filtering content is an abstract idea because it is a long-standing method of organizing human behavior. The court rejected BASCOM’s contention that the claims are directed to a narrower implementation set forth in the claim limitations. The court distinguished this case from the recent decision in Enfish LLC v. Microsoft Corp. because the Enfish claims were unambiguously directed to an improvement in computer capabilities, while here the claims do not readily show that they are directed to a non-abstract idea.
On the second step, however, the Federal Circuit disagreed with the district court and found that the combination of the claim limitations describes an inventive concept. Though each claim limitation by itself may only recite a generic computer, network, or Internet component, an inventive concept can be found in the non-conventional and non-generic arrangement of conventional elements. Here, the inventive concept identified was the installation of the filtering tool at the remote ISP servers with customizable filtering features specific to each end-user.
The Federal Circuit compared the ‘606 patent claims to the patent eligible claims in DDR Holdings, LLC v. Hotels.com, L.P., where the invention offered a technical solution to a problem unique to the Internet. The inventive concept in the ‘606 patent similarly takes advantage of a technical solution—the ability of ISPs to identify individual accounts and associate them with a specific filtering scheme. The court held that the ‘606 patent is not directed to an abstract idea of filtering content applied to the Internet, but rather it is a technology-based solution to filter content on the Internet that overcomes existing problems with the prior art systems. Therefore, the court found that BASCOM’s claims were directed to patent eligible subject matter and remanded the case for further proceedings.
This decision, in conjunction with DDR Holdings, may begin a pendulum swing back toward the eligibility of software claims. In both cases, the court found the “inventive concept” of the second Alice step when the invention incorporated a technological solution. This might offer a worthwhile strategy for drafting new claims to survive § 101 analysis.
Also notable is that the majority was content with building around the Alice framework, but Judge Newman in her concurrence criticized the cumbersome § 101 challenge procedures. In particular, she contended that determining patentability under § 102, § 103, and § 112 can obviate the need to determine eligibility under § 101. For example, even without the Alice analysis, § 112 can weed out abstract ideas because subject matter that is imprecise or too broad will not comply with § 112. She also noted that a separate patent eligibility analysis is redundant because arguments regarding any “abstract idea” and “inventive concept” will be repeated in analyzing patentability under the other relevant portions of the law. Though Judge Newman doesn’t go so far as to denounce the Alice framework, she urges district courts to have more flexibility in resolving § 101 challenges by considering issues of patentability alongside subject matter eligibility.