Surviving Alice with a Non-Conventional and Non-Generic Arrangement

John Kong | September 16, 2016

Bascom Global Internet Services, Inc. v. AT&T Mobility LLC

June 26, 2016

Before Newman, O’Malley, and Chen.  Opinion by Chen.

Summary

This is the third case, besides DDR and Enfish, where the Federal Circuit found a software related claim patent eligible under 35 USC §101.  In doing so, the Federal Circuit provided another example of how step two of the Alice/Mayo two-part test is to be applied.  In particular, by focusing on the specificity of claimed features, it can be argued that the claims recite a “non-conventional and non-generic arrangement” that is patent eligible.

Details

Representative system claim 1 is reproduced below:

Claim 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.

The invention addresses the problems of improper internet surfing by employees and children.  Corporations and parents have a need to control or restrict access to certain websites.  Software tools allowed inspection of users’ requests to access websites using various filtering mechanisms.  Conventional filtering software were either placed on each local computer, at a local server, or at an Internet Service Provider (ISP).  Filtering at each local computer presented logistical problems for companies.  Filtering at local servers and ISPs suffered from a blunt tool applying a single set of filtering criteria to numerous individuals.  The claimed invention provides a hybrid approach, allowing a remote ISP server to apply individually customizable filtering parameters to a user’s website access request.  This was not done by the prior art.

The district court granted AT&T’s 12(b)(6) motion to dismiss because the claimed invention was directed to the abstract idea of “filtering content” and “no individual limitation was inventive because each limitation, in isolation, was a ‘well known, generic computer component’ or a standard filtering mechanism.”  There was also no “inventive concept” even in the combination of well known, generic computer components and standard filtering features because “[f]iltering software, apparently composed of filtering schemes and filtering elements, was well-known in the prior art” and “using ISP servers to filter content was well-known to practitioners.”

Bascom argued that the claims were directed to a specific implementation of filtering content in a manner that can be customized for the person making the website access request while avoiding the need for local servers or computers to perform such filtering.

The Federal Circuit recognized that sometimes the court will incorporate claim limitations into its articulation of the idea to which a claim is directed (citing Enfish’s reliance on an algorithm corresponding to a computer implemented MPF claim element).  However, in this case, “the claims and their specific limitations do not readily lend themselves to a step-one finding that they are directed to a non-abstract idea.”

Proceeding to the Alice/Mayo step two analysis, the Federal Circuit faulted the district court for making its ordered combination analysis seem like an obviousness analysis.  “The inventive concept inquiry requires more than recognizing that each claim element, by itself, was known in the art.  As is the case here, an inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces.”

The Federal Circuit also emphasized the specification’s disclosures, “the patent describes how its particular arrangement of elements is a technical improvement over prior art ways of filtering such content.”  As such, an analogy was made to the patent eligibility justifications of Diehr for “improving an existing technological process.”

The Federal Circuit also characterized the patent as “claiming a technology-based solution (not an abstract-idea-based solution implemented with generic technical components in a conventional way) to filter content on the Internet that overcomes existing problems with other Internet filtering systems.”  Another analogy was made with DDR, “[b]y 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 improve[s] the performance of the computer system itself.”

Takeaways

  • This case is another example of the importance of the specification’s description of a technical problem in the art and how the claimed invention provides a technical solution to that problem.
  • Although the Federal Circuit faulted the district court’s ordered combination analysis as approximating an obviousness rejection, the Federal Circuit also concludes that “this specific method of filtering Internet content cannot be said, as a matter of law, to have been conventional or generic” after a long discussion about the technical aspects and benefits of the patent. The Federal Circuit’s own characterization of the specific claimed features as being non-conventional and non-generic could also be said to be part of a non-obviousness argument.
  • What separates the district court’s “ordered combination analysis” from the Federal Circuit’s “non-conventional and non-generic arrangement analysis?”  The degree of specificity.  The district court only focused on the ordered combination of filtering mechanisms and the use of ISP servers as constituting well known, conventional, and generic features.  In comparison, the Federal Circuit relied on Bascom’s focus on a specific implementation of filtering that uses the arrangement of a remote ISP server that can apply individually customizable filtering parameters by taking advantage of user associations with website access requests that are identifiable via TCP/IP protocols.  Although the procedural posture of this case may have helped Bascom get its arguments accepted by the Federal Circuit (as the non-movant in a 12(b)(6) motion), it nevertheless highlights the strategy for emphasizing, with specificity, the claimed features that can constitute a “non-conventional and non-generic arrangement.”

Full Opinion

 

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