BASCOM Global Internet Services v AT&T Mobility, post-Alice decision finding software invention patentable, Federal Circuit 2016 (Software Patents)

This was an appeal against a district court decision that the claims of U.S. Patent No. 5,987,606 are invalid as a matter of law under 35 U.S.C. § 101.

The patent relates to preventing the problem of employees from accessing non-work related web sites, such as entertainment web sites, at work. The patent describes its invention as combining the advantages of the then-known filtering tools while avoiding the drawbacks. The claimed filtering system avoids being modified or thwarted by a computer literate end-user, and avoids being installed on and dependent on individual end-user hardware and operating systems or tied to a single local area network or a local server platform by installing the filter at the ISP server.

Individuals are able to customize how requests for Internet content from their own computers are filtered instead of having a universal set of filtering rules applied to everyone’s requests.

The claimed invention is able to provide individually customizable filtering at a remote ISP server by taking advantage of the technical capability of certain communication networks (e.g., using TCP/IP). 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 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. 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.

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.

The 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.

Claim 1 is representative:

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.

In the district court, in a motion to dismiss, AT&T analogized the idea of filtering content to a parent or librarian forbidding children from reading certain books, and argued that performing the filtering on the Internet does not make the idea non abstract. Finally, AT&T pointed to each individual limitation of the claims and argued that none of the limitations transforms the abstract idea of filtering content into patent-eligible subject matter because they do no more than recite routine and conventional activities performed by generic computer components.

BASCOM responded by arguing that the claims of the patent are not directed to an abstract idea because they address a problem arising in the realm of computer networks, and provide a solution entirely rooted in computer technology, similar to the claims at issue in DDR Holdings, LLC v. Hotels.com. BASCOM characterized the recent Supreme Court and Federal Circuit decisions invalidating claims under §101 as focusing on claims that are directed to a longstanding fundamental practice that exists independent of computer technology. BASCOM asserted that its claims are different because filtering Internet content was not longstanding or fundamental at the time of the invention and is not independent of the Internet. Finally, BASCOM argued that, even if the lower court found that the claims are directed to an abstract idea, 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.”

The Federal Circuit started its analysis by agreeing with the district court that filtering content is an abstract idea because it is a longstanding, well-known method of organizing human behavior, similar to concepts previously found to be abstract.

BASCOM argued that the claims are directed to something narrower: the specific implementation of filtering content set forth in the claim limitations. Specifically, BASCOM asserted that claim 1 is directed to the more 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.

The Federal Circuit recognized that they sometimes incorporate claim limitations into their articulation of the idea to which a claim is directed (e.g., as they did in Enfish).  This case, however, unlike Enfish, presented a “close call” about how to characterize what the claims are directed to.

The Federal Circuit therefore deferred their consideration of the specific claim limitations narrowing effect for step two.

According to the Federal Circuit, step two involves the search for an “inventive concept.” The “inventive concept” may arise in one or more of the individual claim limitations or in the
ordered combination of the limitations.

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 Federal Circuit agreed with the District Court that the limitations of the claims, taken individually, recite generic computer, network and Internet components, none of which is inventive by itself.

In this patent, 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. Such claims would not contain an inventive concept according to the Federal Circuit. 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. 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.

By taking a prior art filter solution (one-size-fits-all filter at the ISP server) and making it more dynamic and efficient (providing individualized filtering at the ISP server), the claimed invention represents a software-based invention that improves the performance of the computer system itself, according to the Federal Circuit.

The Federal Circuit concluded that, while the claims of the patent are directed to the abstract idea of filtering content, BASCOM adequately alleged that the claims pass step two of
Alice’s two-part framework. BASCOM has alleged that an inventive concept can be found in the ordered combination of claim limitations that transform the abstract idea of filtering
content into a particular, practical application of that abstract idea. The Federal Circuit found nothing that refutes those allegations as a matter of law or justifies dismissal under a motion
under Rule 12(b)(6). The Federal Circuit therefore vacated the district court’s order granting AT&T’s motion to dismiss.