By Jody Coultas, J.D.
An Internet filtering software patent was not invalid as abstract, according to the U.S. Court of Appeals for the Federal Circuit (BASCOM Global Internet Services, Inc. v. AT&T Mobility LLC, June 27, 2016, Chen, R.). A Texas district court decision finding the patent invalid was reversed and the case was remanded.
To control access to certain Internet websites, a software tool was created that inspected a user’s request to access a website and applied one or more filtering mechanisms. U.S. Patent No. 5,987,606 (the ‘606 patent) claims a filtering system that could not be "modified or thwarted by a computer literate end-user," and avoided being installed on and dependent on "individual end-user hardware and operating systems" or "tied to a single local area network or a local server platform" by installing the filter at the Internet Service Provider (ISP) server. The claimed invention provided individually customizable filtering at the remote ISP server by taking advantage of the technical capability of certain communication networks.
In response to a suit by BASCOM Global Internet Services, Inc., the ‘606 patent holder, AT&T Mobility LLC 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." The United States District Court for the Northern District of Texas held that BASCOM failed to state a claim because the claims the ‘606 patent were invalid as abstract. BASCOM appealed.
The district court was correct in its conclusion that the ‘606 patent claims were directed to an abstract idea, according to the court. Filtering content is an abstract idea, and an abstract idea on "an Internet computer network" or on a generic computer is still an abstract idea. Also, the claims and their specific limitations did not allow for a finding that they were directed to a nonabstract idea.
The district court erred, however, in concluding that the patent was invalid as abstract because the claims included an inventive concept that transforms the abstract idea into a patent-eligible invention, according to the court. The limitations "local client computer," "remote ISP server," "Internet computer network," and "controlled access network accounts" were well-known generic computer components, and the district court was correct that the limitations of the claims, taken individually, recited generic computer, network, and Internet components. However, the inventive concept claimed in the ’606 patent was the installation of a filtering tool at a specific location, remote from the end-users, with customizable filtering features specific to each end user. The claims did not preempt all ways of filtering content on the Internet as they recited a specific, discrete implementation of the abstract idea of filtering content.
Concurring opinion. Judge Newman wrote separately to urge a more flexible approach to the determination of patent eligibility. "There is no good reason why the district court should be constrained from determining patentability, instead of eligibility based on ‘abstract idea,’ when the patentability/validity determination would be dispositive of the dispute." The concurring opinion posits that instead of an initial evidentiary procedure for determination of eligibility at trial and appeal, followed by another cycle of patentability litigation when eligibility is found, an initial decision directed to patentability may resolve or moot any issue of eligibility. Initial determination of eligibility often does not resolve patentability, whereas initial determination of patentability issues always resolves or moots eligibility.
The case is No. 2015-1763.
Attorneys: Arun Subramanian (Susman Godfrey LLP) for BASCOM Global Internet Services, Inc. Bryant C. Boren, Jr. (Baker Botts LLP) for AT&T Mobility LLC.
Companies: BASCOM Global Internet Services, Inc.; AT&T Mobility LLC
MainStory: TopStory FedCirNews
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