Recent Federal Circuit cases provide direction on how to satisfy the PTO or the federal courts that software is eligible for a patent. Some key points include:
- New ways of organizing data
- New connections between modules of data
- New ways of providing access to data
- New locations on a computer or network for operations previously known
- Deletion of steps previously used in the prior art
- The outcome of the above results in faster searching, more effective storage of data such as using less space, more flexibility in the organizing and use of the data
In addition to the Enfish case, another recent case, Bascom Global Internet Services, Inc. v. AT&T Mobility LLC, also held the software invention in patent 5,987,606 to be patent-eligible, but it was a closer question than in Enfish.
The claimed invention provides individually customizable filtering at a remote Internet Service Provider (ISP) server by taking advantage of the technical capability of certain communication networks. In these networks, the ISP is able to associate an individual user with a specific request to access a website (or other Internet content), and can distinguish that user’s requests from other users’ requests. One way that the ISP is able to make this association, as described in the ’606 patent, is by requiring each user to first complete a log-in process with the ISP server. After a user has logged in, the ISP server can associate the user with a request to access a specific website (“In the TCP/IP protocol, each Internet access request or ‘packet’ includes the [website] from which content is requested”). Because the filtering tool on the ISP server contains each user’s customized filtering mechanism, the filtering tool working in combination with the ISP server can apply a specific user’s filtering mechanism to the websites requested by that user. To summarize, the ISP server receives a request to access a website, associates the request with a particular user, and identifies the requested website. The filtering tool then applies the filtering mechanism associated with the particular user to the requested website to determine whether the user associated with that request is allowed access to the website. The filtering tool returns either the content of the website to the user, or a message to the user indicating that the request was denied. This patent describes its filtering system as a novel advance over prior art computer filters, in that no one had previously provided customized filters at a remote server.
The patent owner argued that the claims are directed to the specific implementation of filtering content set forth in the claim limitations. Specifically, it argued claim 1 is “directed to the specific problem of providing Internet-content filtering in a manner that can be customized for the person attempting to access such content while avoiding the need for (potentially millions of) local servers or computers to perform such filtering and while being less susceptible to circumvention by the user.” Claim 23 is directed to the even more particular problem of structuring a filtering scheme not just to be effective, but also to make user-level customization remain administrable as users are added instead of becoming intractably complex. The Federal Circuit, however, found that the patent’s disclosure and the claims were directed to an abstract idea, i.e., data filtering.
The Court’s finding was not the end of the analysis, however, as even abstract ideas can be patentable if “an inventive concept” is claimed specifically if it claims “significantly more than the abstract idea itself, and is not merely an instruction to implement or apply the abstract idea on a computer.”
The Court found that the inventive concept 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. The inventive concept rests on taking advantage of the ability of at least some ISPs to identify individual accounts which communicate with the ISP server and to associate a request for Internet content with a specific individual account. For example, FIG. 3 of the ‘606 patent shows the ISP server 100 process for accepting a log-in request 200; the ISP server 100 first verifies 201 whether the user is a registered subscriber. In the TCP/IP protocol, each Internet access request or ‘packet’ includes the website from which content is requested. 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.
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. 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. Preemption is a very important question, asking whether the patent’s claims would prevent all methods of filtering. 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.
Claim 1 of the Bascom patent provides a content filtering system for filtering content retrieved from an Internet computer network by individually controlled access network accounts, said filtering system comprising:
- A local client computer generating network access requests for said individually controlled access network accounts;
- At least one filtering scheme;
- A plurality of sets of logical filtering elements; and
- A remote ISP server coupled to said client computer and said Internet computer network, said ISP server associating each said network account to at least one filtering scheme and at least one set of filtering elements, said ISP server further receiving said network access requests from said client computer and executing said associated filtering scheme utilizing said associated set of logical filtering elements.