BASCOM Global Internet Services, Inc. v. AT&T Mobility LLC
827 F.3d 1341 (2016)
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Rule of Law:
An ordered combination of conventional, generic computer elements can supply the inventive concept necessary to transform an abstract idea into a patent-eligible invention if that arrangement provides a specific technical improvement over prior art solutions.
Facts:
- In the 1990s, software tools were developed to filter unwanted internet content.
- One prior art approach involved installing filtering software on each user's local computer, but this was difficult to maintain and could be easily bypassed by a savvy user.
- Another prior art approach involved placing a single filter on a local server or a remote Internet Service Provider (ISP) server.
- These server-based filters were more difficult to bypass but applied a single, 'one-size-fits-all' set of filtering rules to all users, lacking individual customization.
- BASCOM developed and patented a system that located a filtering tool on a remote ISP server, a centralized and difficult-to-bypass location.
- BASCOM's system was designed to allow each individual network account to have its own customizable filtering scheme and list of filtering elements, combining the benefits of centralized location with individual user control.
Procedural Posture:
- BASCOM Global Internet Services, Inc. sued AT&T Inc. for patent infringement in the U.S. District Court for the Northern District of Texas (a federal trial court).
- AT&T filed a motion to dismiss under Federal Rule of Civil Procedure 12(b)(6), arguing that the claims of BASCOM's patent were invalid under 35 U.S.C. § 101 for being directed to an abstract idea.
- The district court granted AT&T's motion to dismiss, holding that the claims were directed to the abstract idea of 'filtering content' and lacked an 'inventive concept.'
- BASCOM, the plaintiff-appellant, appealed the district court's dismissal to the U.S. Court of Appeals for the Federal Circuit.
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Issue:
Does a patent claim for an internet content filtering system contain a sufficient inventive concept to be patent-eligible under 35 U.S.C. § 101 when it arranges known, generic computer components in a non-conventional and non-generic way to provide a technical improvement over prior art filtering systems?
Opinions:
Majority - Chen, Circuit Judge
Yes, the patent claim contains a sufficient inventive concept to be patent-eligible. Although filtering content is an abstract idea (Alice Step 1), the patent's specific arrangement of elements provides the necessary inventive concept to transform it into a patent-eligible application (Alice Step 2). The court reasoned that while each individual element of the claim (ISP server, client computer, filtering schemes) was generic and known, their 'ordered combination' was not conventional. The specific architecture of placing an individually customizable filter at a remote ISP server was a non-generic technical solution to a technical problem inherent in prior art systems. This arrangement improved upon existing technological processes and was not merely an instruction to implement an abstract idea on a generic computer, thus satisfying the inventive concept requirement.
Concurring - Newman, Circuit Judge
The opinion concurs in the result to remand the case but criticizes the two-step Alice framework as inefficient and cumbersome. It argues that courts should have the flexibility to resolve questions of patentability under sections 102 (novelty) or 103 (obviousness) directly, as these determinations would often moot the eligibility question under section 101. The concurrence suggests that if an invention meets the statutory requirements for patentability, such as being new and non-obvious, it should not be considered an ineligible abstract idea. This approach would streamline litigation by avoiding separate, time-consuming proceedings for eligibility and patentability.
Analysis:
This decision is significant for software patents because it clarifies that the 'inventive concept' under Alice step two can be found in the specific, non-conventional arrangement of otherwise conventional elements. It provided a crucial counterpoint to a trend of invalidating software patents by simply breaking them down into their generic computer components and finding each one to be well-known. The case establishes that a claim can be patent-eligible if it recites a specific technological improvement over the prior art, even if built from known parts, distinguishing it from claims that merely implement an abstract idea on a generic computer without any particular technical innovation.
