In reversing a U.S. District Court holding that a computer program patent for a content filtering system retrieved from an Internet computer network was ineligible subject matter for a patent under 35 U.S.C. §101, the Court of Appeals for the Federal Circuit held that, although the present case is a “close call”, the patent defines eligible subject matter because it is an ordered combination of limitations, solving a problem unique to computer networks and it does not preempt all ways of filtering content on the Internet. Bascom Global Internet Services Inc. v. AT&T Mobility LLC, Case No. 2015-1763 (Fed. Cir. June 27, 2016)(Available Here).
In the claimed invention, 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. The patented 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 primary patent claim recited: “A content filtering system for filtering content retrieved from an Internet computer network by individual controlled access network accounts, said filtering system comprising: [a] a local client computer generating network access requests for said individual controlled access network accounts; [b] at least one filtering scheme; [c] a plurality of sets of logical filtering elements; and [d] 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.”
Bascom, the patentee, explained that the inventive concept rests on taking advantage of the ability of at least some ISPs to identify individual accounts that communicate with the ISP server, and to associate a request for Internet content with a specific individual account. Further, the inventive concept harnessed this technical feature of network technology in a filtering system by associating individual accounts with their own filtering scheme and elements while locating the filtering system on an ISP server.
The Federal Circuit found that the claim itself recited that patent eligible ordered combination of the limitations as: 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.”
Although prior art filters existed on the user’s computer and existed on local servers and remote ISP servers at the time of the invention, the claimed filtering tool retains the advantage of a filtering tool that is located on each local computer and 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 from a single ISP. Stated otherwise, the ISP identified individual accounts that communicated with the ISP server, and associated a request for Internet content with a specific individual account.
In contrast to the prior art, the claimed invention, operable over multiple networks, permitted the ISP to associate an individual user with a specific request to access a website (or other Internet content), and distinguish that user’s requests from other users’ requests. Further, 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 Federal Circuit Appeals Court applied the two-step analytical framework the determine patent eligible subject matter set forth by the Supreme Court in Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293 (2012), and Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116 (2013) and as further explained in Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347 (2014).
In STEP ONE: The court must first “determine whether the claims at issue are directed to a patent-ineligible concept.” Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347, 2355 (2014). In STEP TWO: if so, the court must then “consider the elements of each claim both individually and ‘as an ordered combination’ to determine whether the additional elements ‘transform the nature of the claim’ into a patent-eligible application.” Alice Corp., quoting Mayo, 132 S. Ct. at 1298, 1297 and Myriad, 133 S. Ct. at 2116. The Appeals Court noted that district courts may dispose of patent infringement claims under §101 whenever procedurally appropriate. Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat. Ass’n, 776 F.3d 1343, 1351 (Fed. Cir. 2014), cert. denied, 136 S. Ct. 119 (2015).
Defendant asserted that under Alice Corp., 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” like the intermediated settlement concept that was held to be an abstract idea in Alice Corp. AT&T analogized the idea of filtering content to a parent or librarian forbidding children from reading certain books.
Patentee Bascom responded by arguing that 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, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014). 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 pointed to the recent case of Enfish LLC v. Microsoft Corp., 2016 WL 2756255, at *8 (Fed. Cir. May 12, 2016) wherein the Court found a patent to a particular improvement to a database system patent eligible under STEP ONE. In Enfish, the Court found claim language reciting the invention’s specific improvements helped the determination in STEP ONE of the Alice Corp framework that the invention was directed to those specific improvements in computer technology.
The Federal Circuit stated that, unlike Enfish, the Bascom patent claims presented a “close call[] about how to characterize what the claims are directed to.” See Enfish at *8. The Enfish claims, understood in light of their specific limitations, were unambiguously directed to an improvement in computer capabilities. See id. at *5. In the Bascom patent, the claims and their specific limitations do not readily lend themselves to a STEP ONE finding that the claims are directed to a nonabstract idea. Therefore, the Court engaged STEP TWO of the Alice Corp/Mayo analysis to consider the specific claim limitations’ narrowing effect for STEP TWO (“consider the elements of each claim both individually and ‘as an ordered combination’ to determine whether the additional elements ‘transform the nature of the claim’ into a patent-eligible application”).
The Federal Circuit, discussed STEP TWO as a 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. Alice, 134 S. Ct. at 2355. 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. Id. at 2358.
Many decisions have held that computer patent program claims, whether a method or a system (patentee Bascom had both method claims and computer system claims at stake), define patent ineligible subject matter. See Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1367 (Fed. Cir. 2015)(holding that “tracking financial transactions to determine whether they exceed a pre-set spending limit (i.e., budgeting)” is an abstract idea that ”is not meaningfully different from the ideas found to be abstract in other cases … involving methods of organizing human activity”); see also Content Extraction & Transmission v. Wells Fargo Bank, N.A., 776 F.3d 1343 (Fed. Cir. 2014)(finding that “(1) collecting data, (2) recognizing certain data within the collected data set, and (3) storing that recognized data in a memory” was an abstract idea because “data collection, recognition, and storage is undisputedly well-known” and “humans have always performed these functions”); Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1350 (Fed. Cir. 2014) (finding that “a process of organizing information through mathematical correlations” is an abstract idea). The Appeals Court noted that “An abstract idea on ‘an Internet computer network’ or on a generic computer is still an abstract idea.”
Although the Federal Circuit Appeals Court agreed with the district court that the limitations of the claims, taken individually, recited generic computer, network and Internet components, none of which were inventive by itself, patentee Bascom did not assert that it invented local computers, ISP servers, networks, network accounts, or filtering nor did the specification describe those elements as inventive. The Appeals Court disagreed with the district court’s analysis of the ordered combination of limitations.
Patentee Bascom explained that the inventive concept rests on taking advantage of the ability of at least some ISPs to identify individual accounts that communicate with the ISP server, and to associate a request for Internet content with a specific individual account. According to Bascom, the inventive concept harnesses this technical feature of network technology in a filtering system by associating individual accounts with their own filtering scheme and elements while locating the filtering system on an ISP server.
In another Federal Circuit case, DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014) wherein the Court confirmed patent eligible subject matter, the Court held that DDR’s patent claimed a technical solution to a problem unique to the Internet-websites instantly losing views upon the click of a link, which would send the viewer across cyberspace to another company’s website. 773 F.3d at 1248-50. The claimed invention solved that problem in a particular, technical way by sending the viewer to a hybrid webpage that combined visual elements of the first website with the desired content from the second website that the viewer wished to access.
Per the Federal Circuit, “The [Bascom] claims do note 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. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011) (reasoning that the use of the Internet to verify a credit card transaction does not meaningfully add to the abstract idea of verifying the transaction). 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.”
With respect to computer program patents that were held to define patent ineligible subject matter, the Appeal Court discussed OIP Technologies, Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015), wherein the claims at issue were directed to the abstract idea of offer-based price optimization which was implemented by “‘sending a first set of electronic messages over a network to devices,’ the devices being ‘programmed to communicate,’ storing test results in a ‘machine-readable medium,’ and ‘using a computerized system … to automatically determine’ an estimated outcome and setting a price.” OIP Technologies, Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015). In other words, the claims simply required the performance of the abstract idea of offer-based price optimization on generic computer components using conventional computer activities.
The claims in the Intellectual Ventures I case preempted all use of the claimed abstract idea on “the Internet, on a generic computer.” Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1371 (Fed. Cir. 2015). The claims in Content Extraction & Transmission v. Wells Fargo Bank, N.A., 776 F.3d 1343 (Fed. Cir. 2014), preempted all use of the claimed abstract idea on well-known generic scanning devices and data processing technology. 776 F.3d at 1348. The claims in Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014) preempted all use of the claimed abstract idea on the Internet. 772 F.3d at 715– 16. The claims in Accenture Global Services, GmbH v. Guidewire Software, Inc., 728 F.3d 1336 (Fed. Cir. 2013) preempted all use of the claimed abstract idea on generic computer components performing conventional activities. 728 F.3d at 1344-45. The Court’s decisions further explained that simply because some of the claims narrowed the scope of protection through additional “conventional” steps for performing the abstract idea, they did not make those claims any less abstract.
As explained by the Federal Circuit: “As explained above, construed in favor of Bascom as they must be in this procedural posture, the claims of the ‘606 patent do not preempt the use of the abstract idea of filtering content on the Internet or on generic computer components performing conventional activities. The claims carve out a specific location for the filtering system (a remote ISP server) and require the filtering system to give users the ability to customize filtering for their individual network accounts.” Therefore, patentee Bascom’s claims defined patent eligible subject matter.
