Details: BASCOM Global Internet Services, Inc. v. AT&T Mobility, LLC
Decided: June 27, 2016
On June 27, 2016, the United States Court of Appeals for the Federal Circuit issued a decision in BASCOM Global Internet Services, Inc. v. AT&T Mobility, LLC further expanding upon step two of the Alice/Mayo framework. As a quick refresher, step one of the Alice/Mayo framework determines whether the claims recite merely an abstract idea, and step two of the Alice/Mayo framework determines whether the claims, if directed to an abstract idea, include an "inventive concept." As stated in Alice v. CLS Bank, "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."
The patent at issue, U.S. Patent No. 5,987,606, included two groups of claims: a first group limited to individual-customizable filtering on a remote ISP server, and a second group further limited to a hybrid filtering scheme implemented on the ISP server comprised of a master-inclusive list, an individual-customizable set of exclusive lists, and an individual-customizable set of inclusive lists. Claim 1 was representative of the individual-customizable filtering and recited:
1. A content filtering system for filtering content retrieved from an Internet computer network by individual controlled access network accounts, said filtering system comprising:
a local client computer generating network access requests for said individual 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 filter- ing 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.
Claim 23, which depends upon claim 22, was representative of the hybrid filtering scheme, and claims 22 and 23 recited:
22. An ISP server for filtering content forwarded to controlled access network account generating network access requests at a remote client computer, each network access request including a destination address field, said ISP server comprising:This case came to the Federal Circuit through on an appeal filed by BASCOM from a district court's decision to grant a motion to dismiss under Rule 12(b)(6). In its analysis, the Federal Circuit agreed with the district court's assessment that the claims were directed to the abstract idea of filtering content on the Internet at step one of the Mayo/Alice framework.
a master inclusive-list of allowed sites;
a plurality of sets of exclusive-lists of excluded sites, each controlled access network account associated with at least one set of said plurality of exclusive-lists of excluded sites; and
a filtering scheme, said filtering scheme allowing said network access request if said destination address exists on said master inclusive-list but not on said at least one associated exclusive-list, whereby said controlled access accounts may be uniquely associated with one or more sets of excluded sites.
23. The ISP server of claim 22 further comprising:
a plurality of inclusive-lists of allowed sites, each controlled access user associated with at least one of said plurality of inclusive-lists of allowed sites, said filtering program further allowing said network access request if said requested destination address exists on said at least one associated inclusive-list.
However, the Federal Circuit disagreed with the district court's assessment that the claimed subject matter did not include an "inventive concept." The district court found that BASCOM did not adequately assert that the claims included an "inventive concept" because "considered individually, or as an ordered combination, are no more than routine additional steps involving generic computer components and the Internet, which interact in well-known ways to accomplish the abstract idea of filtering Internet content.”
The Federal Circuit agreed that the limitations of the claims, when taken individually, did recite "generic computer, network and Internet components." However, the Federal Circuit stated that the "inventive concept inquiry requires more than recognizing that each claim element, by itself, was known in the art" and that "an inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces." To support its decision, the Federal Circuit stated that the claims did not preempt "all ways of filtering content on the Internet" but instead were directed to "a particular, practical application of that abstract idea."
The Federal Circuit went on analogize the claims at issue with the claims at issue in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014). For example, the Federal Circuit identified that the present claims were claiming a technology-based solution to filter content on the Internet that overcomes existing problems with other Internet filtering systems much like the claims present in DDR which were claiming a technical way to satisfy an existing problem for website hosts and viewers.
My two cents: Finally, a Federal Circuit decision providing applicants and appellants the ability to rebut step two assertions from the Patent Office that the claim elements merely recite a "generic," "routine," and/or "conventional" components.