BASCOM Global Internet Services, Inc. v. AT&T Mobility, AT&T Corp.


Docket No. 2015-1763

NEWMAN, O’MALLEY, CHEN
June 27, 2016

Brief Summary: DC decision granting motion to dismiss based on its finding of ineligibility under § 101 vacated and remanded (claims were found not to “preempt all ways of filtering content on the Internet”).

Summary: BASCOM appealed DC grant of motion to dismiss under Rule 12(b)(6) for failure to state a claim because the claims of US 5,987,606 are invalid under § 101. BASCOM argued that its claims include an “inventive concept” that satisfies the second step of the “Alice” test and the FC panel agreed. The ‘606 patent relates to internet content filtering tools that allow users to select filtering schemes from local computers using a remote server (“provide individually customizable filtering at the remote ISP server”). “AT&T argued that the claims were directed to the abstract idea of ‘filtering content,’ ‘filtering Internet content,’ or ‘determining who gets to see what,’ each of which is a well-known ‘method of organizing human activity’” as in Alice, and 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 argued the claims “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” (FC 2014). BASCOM also agrued “even if the lower court found the claims are directed to an abstract idea, the inventive concept is found in the ordered combination of the limitations”. The DC agreed with AT&T. The FC panel agreed with the DC “that filtering content is an abstract idea because it is a long-standing, well-known method of organizing human behavior, similar to concepts previously found to be abstract” (Intell. Ventures, FC 2015). But it also found that “[t]his case, unlike in Enfish [FC 2016], presents a close call[] about how to characterize what the claims are directed to” and “the claims and their specific limitations do not readily lend themselves to a step-one finding that they are directed to a nonabstract idea.” Under step two, the panel considered whether the “inventive concept…transforms the abstract idea into a patent-eligible invention [that is] significantly more than the abstract idea itself” and not “simply an instruction to implement or apply the abstract idea on a computer.” The FC panel agreed with the DC that the “network and Internet components” were not inventive themselves but also found the ordered combination to be inventive (“an inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces”). The claims were found not to “preempt all ways of filtering content on the Internet” and “construed in favor of…BASCOM…are morer than a drafting effort designed to monopolize the [abstract idea]” (“the claims may be read to ‘improve[] an existing technological process”) (citing Alice). As in DDR, the FC panel explained, the ‘606 patent is “claiming a technology-based solution” and “not an abstract-idea-based solution implemented with generic technical components in a conventional way”. Judge Newman’s concurring opinion characterized Section 101 challenges as having led to “judicial protocols that are time-consuming and usually unnecessary” and “cumbersome…with no balancing benefit.”

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