This case arose on an appeal from the grant of a motion to dismiss for failure to state a claim, with the district court finding the asserted claims of Bascom’s U.S. Patent No. 5,987,606 were invalid as a matter of law under 35 U.S.C. §101. The technology at issue in the ‘606 patent concerns software tools to control the type of information received over the Internet. The district court found the claims directed to the abstract idea of filtering content and specifically pointed to the lack of a specific method in the claims for filtering the content as raising the risk that the claims could preempt all other filtering application in the field.
The prior art utilized several filtering methods. One method installed the filtering software on individual machines; this approach allowed individualized filtering settings but required intensive maintenance and was subject to circumvention by computer-literate users. Another method involved installing the filtering software on a local server or ISP rather than individual machines; this approach addressed some of the problems with locally installed software but applied a single set of filtering criteria for all users. The ‘606 describes an improvement on the prior art methods of filtering internet content that provided the advantages of the filtering software being housed at the ISP while still retaining the ability of individual users to customize filter settings. As described in the ‘606 patent, the ISP server receives a request to access a website, associates the request with a particular user, identifies the requested website and uses the filtering tool to apply the filtering mechanism associated with the particular user to the requested website to determine whether such request is allowed under the filter settings.
Claim 1 of the ‘606 patent:
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.
Before addressing the merits of the case, the CAFC noted that under the two-step §101 analysis mandated under Alice the court had found software-related patent claims eligible under step one when the claims were clearly “directed to” subject matter that amounted to more than a mere abstract idea (citing Enfish and the improvement to relational databases/computer function). In other cases when there are “close calls about how to characterize what the claims are directed to” the court found such claims eligible under step two of the Alice analysis (citing DDR Holdings and the use of a computer-based solution to solve an internet-based problem). In discussing the step two analysis, the court stated some claims may appear to be “directed to” an abstract idea “…but under step two of the Alice analysis, it might become clear that the specific improvements in the recited computer technology go beyond ‘well-understood, routine, conventional activit[ies]’ and render the invention patent-eligible.”
Under step one of Alice, the court determined that claim 1 (and claim 22, which claimed a similar method) could indeed be characterized as directed to the concept of filtering internet content, further noting the specification reinforced this interpretation. The court further found that filtering internet content is an abstract idea as a “well-known method of organizing human behavior, similar to concepts previously found to be abstract” under previous case law (citing Intellectual Venture, Content Extraction and Digitech Image Tech). The patentee argued that the claims were directed to a specific manner of filtering internet content in a customized manner and did not require placement on local computers or servers (claim 1) and to allow user customization to be administered by a user in a simple manner (claim 22). The panel found that the claims at issue in the ‘606 patent represented a “close call  about how to characterize what the claims are directed to.” The court distinguished Enfish, where a specific claim limitation reciting a specific algorithm was used to demonstrate that the claims “understood in light of their specific limitations, were unambiguously directed to an improvement in computer capabilities.” As a result, the court turned to the step two of the Alice inquiry.
An Inventive Concept Can be Found in the Non-Conventional and Non-Generic Arrangement of Known, Conventional Pieces.
Under step two and the search for inventive concept, the panel stated the inventive concept “may arise in one or more of the individual claim limitations or in the ordered combination of the limitations.” The district court found that the claims “considered individually, or as an ordered combination, are no more than routine additional steps involving generic computer components and the Internet, which interact in well-known ways to accomplish the abstract idea of filtering Internet content,” giving weight to the fact that the code for the filtering step was available in the art. While agreeing with the step-one analysis, the CAFC found the district court’s analysis of the ordered combination to be flawed stating the “inventive concept inquiry requires more than recognizing that each claim element, by itself, was known in the art.” In this case, the claims defined the installation of a filtering tool at a specific location, remote from the end users, with customizable filtering features specific to each end user, providing advantages over the prior art. The court found by “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.’” The panel found that nothing in the record showed that such steps were routine or generic. As such, based on the record presented to the panel, the claims were found to satisfy step two of the Alice inquiry.
Regarding the preemption issue, Judge Newman stated in a concurring opinion “it is not the policy of patent law to permit only narrow claims when an inventor has made a new, broad invention. When an invention is new and unobvious and described and enabled, commensurate patent rights are not barred on policy grounds.”
While this case was presented as an appeal on a record that may not have been fully developed, this case provides valuable guidance on how the CAFC analyzes the threshold determinations under the two step Alice inquiry. The court’s statement on the ability of combinations of known claim limitations to nonetheless provide patentable combinations is also welcome. As with previous cases, a description of how the claims relate to improving the technological process is also important. However, in Bascom, the exact method of how the improvement was implemented was not specifically described (and in fact was not described as novel) as was done in Enfish (where the implementation of the method was a specifically described algorithm). This point potentially further enlarges the ability to patent software-related inventions and may suggest that the exact description of how the improvement in computer technology is implemented is not absolutely required for patentability of software invention under the Alice guidelines.