The Software IP Report

Federal Circuit Makes Patent-Eligibility under 35 U.S.C. § 101 Even Murkier

By Charles Bieneman

Categories: Patent Eligibility, The Software IP Report

Claims  of  U.S. Patent No. 5,987,606, directed to “content filtering information retrieved from an internet computer network,” recited an “inventive concept,” and therefore were patent-eligible as a matter of law under 35 U.S.C. § 101.  BASCOM Global Internet Services, Inc. v. ATT Mobility LLC., No. 2015-1763 (June 27, 2016).  Judge Chen wrote for a majority that included Judge O’Malley; Judge Newman wrote separately, concurring in the result.  Judge Chen’s opinion agreed with the patent owner’s contention that “the claims of the ’606 patent contain an ‘inventive concept’ in their ordered combination of limitations sufficient to satisfy the second step of the Supreme Court’s Alice test.”

The majority agreed with the District court that the ‘606 patent claims were directed to the abstract idea of “filtering content.”  Judge Chen, who also authored the majority opinion in DDR Holdings, LLC v., L.P., 773 F.3d 1245 (Fed. Cir. 2014), thought that the claims in this case, as in DDR, recited an inventive concept.  The district court was correct that the claim elements, by themselves, simply recited generic computer technology.  And yet, the court found, “[t]he claims do not merely recite the abstract idea of filtering content along with the requirement to perform it on the Internet, or to perform it on a set of  generic computer components.”  Instead, the claims recited “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.”  The claims, the court explained, implemented a dynamic filtering system that improved a computer’s performance.

Judge Newman’s concurrence focused on her argument that the court’s should focus on patentability under 35 U.S.C. §§ 102, 103, and 112 at the same time as patent-eligibility, which could moot some patent-eligibility decisions.  Her suggestion may never be implemented, but one can surely share her frustration at the inefficiencies and uncertainties cause by the current law – procedural and substantive – for determining patent-eligibility under 35 U.S.C. § 101.