Not Dead Yet – BASCOM Gives Alice a Different View Through the Looking Glass

More closely on the heels of the Enfish, LLC v. Microsoft Corp.[1] decision than we might have expected, the Court of Appeals for the Federal Circuit has reversed yet another district court holding of patent-ineligibility of software claims under 35 U.S.C. § 101.

In BASCOM Global Internet Servs. v. AT&T Mobility LLC,[2] the Federal Circuit focused on yet another aspect of the U.S. Supreme Court decisions in Alice Corp. Pty. Ltd. v. CLS Bank Int’l[3] and Mayo Collaborative Services v. Prometheus Laboratories, Inc.[4]:  the “ordered combination” of elements in the patent claims at issue:

“In Mayo, the Supreme Court set forth a two-step analytical framework to identify patents that, in essence, claim nothing more than abstract ideas. The court must first “determine whether the claims at issue are directed to a patent-ineligible concept.” Alice, 134 S. Ct. at 2355. 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.” Id. (quoting Mayo, 132 S. Ct. at 1298, 1297).”[5]

In Enfish, the Federal Circuit noted the same test, but found that the claims there were not directed to an abstract idea, and so did not reach the second part of the test which involves the “ordered combination”.  In DDR Holdings, LLC v Hotels.com L.P.,[6] the Federal Circuit characterized the second step of the test, including the consideration of claim elements as an ordered combination, as “the search for an ‘inventive concept’ or some element or combination of elements sufficient to ensure that the claim in practice amounts to ‘significantly more’ than a patent on an ineligible concept.”[7]

The patent at issue in BASCOM relates to a system for filtering Internet content.  As the Federal Circuit described the invention, “the claimed filtering system is located on a remote ISP server that associates each network account with (1) one or more filtering schemes and (2) at least one set of filtering elements from a plurality of sets of filtering elements, thereby allowing individual network accounts to customize the filtering of Internet traffic associated with the account.”[8]

In the district court, AT&T argued successfully that the claims were directed merely to the abstract idea of filtering Internet content.  In Enfish, the Federal Circuit acknowledged that in cases involving computer-related claims, there may be a “close call” about how to characterize the claims.[9]  The Federal Circuit did not find such a close call in Enfish, but did find one in BASCOM.  Consequently, the court found it necessary to perform an analysis under step two of the two-part test.[10]

Going to that part of the test, the Federal Circuit noted that the district court looked at claim elements in the BASCOM patent individually and collectively.  However, the Federal Circuit criticized the district court’s “collective” analysis as being “similar to an obviousness analysis under 35 U.S.C. § 103, except lacking an explanation of a reason to combine the limitations as claimed,”[11] noting, “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.”[12]

At first blush, it is a little troubling that the Federal Circuit took to a discussion of obviousness in addressing patent-eligibility.  This would appear to be precisely the kind of conflating of statutory sections (101 and 103) that commentators have criticized relative to the Supreme Court holding in Alice.  However, the notion of “a reason to combine the limitations as claimed” arguably is important to a determination whether the ordered combination of claim elements yields “considerably more” than an abstract idea.  Relatedly, viewing the ordered combination in this light can contribute to a determination whether the patent claim in question preempts more than is warranted – such preemption being relevant or important to a finding of patent-eligibility.

Proceeding through an examination of the ordered combination of claim elements, the Federal Circuit found that the claimed invention in BASCOM did not preempt excessively, finding instead that the claims recited “a specific, discrete implementation of the abstract idea of filtering content.”  The court went on to explain, “Filtering content on the Internet was already a known concept, and the patent describes how its particular arrangement of elements is a technical improvement over prior art ways of filtering such content.”[13]

Focusing on claim elements as an ordered combination is important, particularly in the computer arts, because so many software inventions do indeed run on conventional computer equipment.  Not all of those software inventions constitute improvements to the functioning of that conventional computer equipment, as the Federal Circuit found in Enfish.  But the ordered combination of claim elements, as contrasted with a view of those claim elements individually, can yield an invention that is “significantly more” than an abstract idea, and can transform a claimed invention into something that is patent-eligible.  Viewed in this way, the patent claims in question may be read to improve an existing technological process, and therefore be patent-eligible.[14]

Following so soon after Enfish (particularly given the passage of time between the Federal Circuit holdings in DDR and Enfish), BASCOM provides yet another tool for analyzing patent claims directed to computer-related inventions.  The court’s discussion in BASCOM will be helpful in crafting arguments in favor of patent-eligibility.

[1]           2016 U.S. App. LEXIS 8699 (Fed. Cir., May 12, 2016).

[2]           2016 U.S. App. LEXIS 11687 (Fed. Cir., June 27, 2016).

[3]           ___U.S.___, 134 S. Ct. 2347 (2014).

[4]           ___U.S.___, 132 S. Ct. 1289 (2012).

[5]           2016 U.S. App. LEXIS 11687, *14 (emphasis added).

[6]           773 F.3d 1245 (Fed. Cir. 2014).

[7]           Id. at 1259.

[8]           BASCOM, 2016 U.S. App. LEXIS 11687, *8.

[9]           Enfish, 2016 U.S. App. LEXIS 8699, *22.

[10]         BASCOM, 2016 U.S. App. LEXIS 11687, *18 (citing Enfish, supra).

[11]         Id. at *20.

[12]         Id. at *20-21.

[13]         Id. at *23.

[14]         Id. (citing Alice).

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