BASCOM Global Internet Services, Inc. v. AT&T Mobility LLC
827 F.3d 1341
| Fed. Cir. | 2016

Background

  • BASCOM owns U.S. Patent No. 5,987,606 claiming a content-filtering system located on an ISP server that associates individual network accounts with customizable filtering schemes and lists.
  • Prior art: filters were implemented on local client machines (easy to circumvent, hard to update) or on local servers/ISPs using one-size-fits-all rules; BASCOM’s patent asserts a novel combination: remote ISP-based filtering with per-user customization.
  • BASCOM sued AT&T for infringement; AT&T moved to dismiss under FRCP 12(b)(6), arguing the claims are invalid under 35 U.S.C. § 101 as directed to an abstract idea and lack an "inventive concept."
  • The District Court held the claims were directed to the abstract idea of filtering content and that the claim elements—individually and in combination—were routine, conventional, and thus failed Alice step two, granting dismissal.
  • The Federal Circuit panel (Chen, J.) vacated and remanded: it agreed the claims are directed to an abstract idea (Alice step one) but held BASCOM adequately alleged an inventive concept in the ordered combination (Alice step two) such that dismissal at the pleadings stage was improper.
  • Judge Newman concurred in the result and urged that, where appropriate, courts should resolve patentability (Sections 102/103/112) directly rather than run separate, often duplicative, § 101 eligibility proceedings.

Issues

Issue Plaintiff's Argument Defendant's Argument Held
Are the claims directed to patent‑eligible subject matter under 35 U.S.C. § 101 (Alice step one)? BASCOM: claims solve a computer-network specific problem and are akin to DDR — a technical solution rooted in computer technology. AT&T: claims are directed to the abstract idea of filtering content (a conventional method of organizing human activity), merely performed on the Internet. Court: Claims are directed to the abstract idea of filtering content (step one).
Do the claims contain an "inventive concept" that transforms the abstract idea into patent-eligible application (Alice step two)? BASCOM: the inventive concept is the non-conventional ordered combination — placing the filter at an ISP server while associating per-user customizable filtering schemes and elements. AT&T: each limitation and their combination are routine, conventional uses of generic computer components; no inventive concept. Court: On the pleadings, BASCOM adequately alleged an inventive concept in the ordered combination; dismissal was improper.
Whether the claimed combination merely preempts all filtering on the Internet? BASCOM: claims are a specific technical implementation and do not preempt all filtering approaches. AT&T: broad claim language risks preemption of all Internet filtering solutions. Court: Claims do not on this record preempt all filtering; they recite a specific, discrete implementation.
Appropriate procedural path: §101 eligibility dismissal at pleadings stage vs. direct patentability inquiry? BASCOM: sought to proceed beyond pleading and litigate validity facts later. AT&T: pursued §101 dismissal at the pleading stage. Concurrence (Newman): recommends courts be allowed to resolve patentability (102/103/112) directly when disposition would be dispositive, to avoid redundant proceedings.

Key Cases Cited

  • Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 134 S. Ct. 2347 (U.S. 2014) (two‑step test for patent‑eligible subject matter)
  • Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289 (U.S. 2012) (framework addressing laws of nature and inventive concept inquiry)
  • Enfish LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016) (software claims may be directed to a specific improvement in computer capabilities)
  • DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014) (Internet‑specific technical solution found patent‑eligible)
  • Content Extraction & Transmission LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343 (Fed. Cir. 2014) (claims to data collection/recognition/storage are abstract)
  • CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366 (Fed. Cir. 2011) (use of the Internet alone does not render an abstract idea patent‑eligible)
  • Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363 (Fed. Cir. 2015) (financial‑transaction tracking is an abstract idea)
  • OIP Technologies, Inc. v. Amazon.com, Inc., 788 F.3d 1359 (Fed. Cir. 2015) (claims that automate an abstract idea on generic computer components are ineligible)
  • Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014) (Internet implementation of an abstract idea insufficient where only conventional computer activity is recited)
  • Accenture Global Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336 (Fed. Cir. 2013) (claims using generic computer components for conventional activity are not patent‑eligible)
  • Diamond v. Diehr, 450 U.S. 175 (U.S. 1981) (applying a mathematical formula in a specific technical process can be patent‑eligible)
  • Research Corp. Techs. v. Microsoft Corp., 627 F.3d 859 (Fed. Cir. 2010) (inventions with specific technological applications are not likely to be abstract)
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