Published 06/09/2016 by Marin Cionca
On June 27, 2016, the United States Court of Appeals for the Federal Circuit (“appeal court”) has decided another case, part of a group of four post Alice cases, which found patent eligible subject matter in the challenged patent. The patent at issue (U.S. Pat. 5,987,606) in this case (BASCOM GLOBAL INTERNET v. AT&T MOBILITY LLC) was directed to a process for filtering content over the Internet. According to the appeal court, the inventive concept of step two of the Supreme Court’s Alice analysis was successfully provided by a specific “ordered combination” of conventional steps, because it provided a solution the prior art content filtering processes and systems failed to provide.
The representative claim (Claim 1) of the disputed patent reads as follows:
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 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.
At the district court level, the court found that the claim recited an abstract idea of “filtering Internet content” which was not limited by an inventive concept because the claims elements individually and in combination were conventional and routine. One argument advanced by BASCOM, which failed, according to the district court, was that “the inventive concept is found in the “ordered combination” of the limitations: a “special ISP server that receives requests for Internet content, which the ISP server then associates with a particular user and a particular filtering scheme and elements.” In a somehow convoluted manner, the appeal court agreed with Bascom, distinguishing cases such as Ultramercial (Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014) and finding that this case is more analogous with DDR (DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014)). As in DDR, the appeal court appeared to see the claimed invention an improvement of the computer technology itself, even though it was accomplished with conventional steps or well-known computer technology. The ordered combination seems to have been enough, in the eyes of the court, even though it consisted of routine, conventional or well-known elements.
What this decision appears to be teaching is that even though all claim elements are well-known or routine, a specific, ordered combination of such elements may still overcome a 101/Alice challenge. To be successful however, when mounting such argument, the specification and the claims may need to provide enough basis to show that the claimed invention improves the computer technology itself, in certain aspects. It should be noted that what was addressed in this appeal was only the eligibility (101/Alice) question. It still remains to be seen if this patent will survive the 102/novelty and 103/challenges, given the conventionality of the claim elements, individually.
Entire court opinion can be found at:
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Marin Cionca, Esq.
Registered Patent Attorney
USPTO Reg. No. 63899
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