In Bascom v. AT&T (Fed. Cir. June 27, 2016), the Court held that the ordered combination of software steps recited in the claims of the patent were eligible for patent protection (i.e., patent eligible) under Section 101. In particular, the Court found that the specific way of associating a local account and a request from the local account for filtering Internet content by a remote server was a specific application of software to a specific problem which led the Court to find the claimed software steps eligible for patent protection and not directed to patent ineligible abstract idea.
The patent (US Pat. No. 5987606) involved in Bascom related to filtering informational content so that an end-user could not view inappropriate content such as for example at work. Content filtering software existed but they were either located on the local computer which was difficult to manage on a large scale or located at a remote server which was difficult to customize for each local computer.
The patented filtering software was installed on the remote server which allowed for ease of wide-scale implementation and was also capable of associating a request for Internet content to a particular local computer thereby also allowing the benefit of individualized filtering.
Bascom (patent owner) sued AT&T for patent infringement. AT&T filed a motion to dismiss, alleging that the patent claimed invention was invalid for being ineligible for patent protection under Section 101. In such a motion the allegations in the complaint are presumed true.
In order to determine whether an invention is patent eligible, the court takes a two-step process as set forth in Alice and Mayo. In step 1, the court must determine whether the claims at issue are directed to a patent–ineligible concept such as an abstract idea. 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 claim that is patent eligible.
Ever since Mayo and Alice, a number of cases have characterized inventions too broadly and loosely so the invention sounds like an abstract idea. (Internet patents, Ariosa and many more). Fortunately, in a recent case involving Section 101 and an analysis of patent eligibility, the court attempted to reign in liberal characterizations of an invention made by the court. The court in Enfish required that the characterization of the invention should incorporate the language of the claims. By doing so, the characterization of the invention put forth by the District Court had to stay somewhat true to the invention as recited in the claims. The court could not liberally paraphrase the claimed invention and distort the nature of the claimed invention so that the claimed invention sounded like an abstract idea.
In the instant case, for the first step in determining whether the claimed invention was directed to an abstract idea, AT&T (defendant) argued that the claimed invention was directed to filtering content on the Internet. AT&T wanted the claimed invention to sound like an abstract idea and used language that is generic. Bascom argued for a narrower definition. In particular, it argued that the claimed invention was “directed to a 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 local servers or computers to perform such filtering and while being less susceptible to circumvention by the user.”
The Court stated that “this case, unlike Enfish, presents a close call about how to characterize what the claims are directed to.” The Enfish court helped to reign in abuses by the courts in overgeneralizing the claimed invention to obtain to a certain result (invalidity). However, the instant case appears to take away the clarity provided by the Enfish court. In particular, this Court in conducting the two step analysis put forth by Mayo and Alice did not follow the normal sequence of step 1 then step 2. This Court went directly to step 2 without determining whether the claimed invention was directed to an abstract idea. The court skipped step one.
The Court found that the claimed invention was eligible for patent protection under step two. However, at the end of the analysis, the Court still characterized the invention broadly without reference to the specific claim language. In particular, the Court stated that the claimed invention was directed to the abstract idea of filtering content.
In finding the claimed invention eligible for patent protection in step 2, the Court recognized that the claim limitations individually are related to conventional components. However, as an ordered combination of steps, the combination of steps collectively was directed to an inventive concept which rested on the ability of remote servers to identify individual accounts to communicate with the server and to associate a request for Internet content with that specific individual account. The Court found that “on this limited record, this specific method of filtering Internet content cannot be said, as a matter of law, to have been conventional or generic.”
In my opinion, this case appears to remove the benefit that the Enfish case provided. The Enfish case limited the District Court’s ability to broadly characterize a claimed invention by divorcing the characterization of the claimed invention from the claim language and giving the court greater leeway in charactering the claimed invention generically to seem more like an abstract idea. The Enfish case required the District Court to use the claim language in order to characterize the claimed invention which would limit the district court’s ability to over generalize the claimed invention. Cases prior to the Enfish case showed that the District Court would oftentimes overgeneralize the claimed invention so as to identify the claimed invention as being directed to an abstract idea.
In Bascom, the court, even without characterizing the claimed invention in step 1, proceeded to the second step. By doing so, the court eliminated the first step which provided restraint to the judiciary from broadly characterizing the claimed invention to make the claimed invention appear to be an abstract idea.
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