BASCOM Global Internet Services, Inc. v. AT&T Mobility LLC

United States Court of Appeals

for the Federal Circuit

______________________

BASCOM GLOBAL INTERNET SERVICES, INC.,

Plaintiff-Appellant

v.

AT&T MOBILITY LLC, AT&T CORP.,

Defendants-Appellees

______________________

2015-1763

______________________

Appeal from the United States District Court for the

Northern District of Texas in No. 3:14-cv-03942-M, Judge

Barbara M.G. Lynn.

______________________

Decided: June 27, 2016

______________________

ARUN SUBRAMANIAN, Susman Godfrey LLP, New

York, NY, argued for plaintiff-appellant. Also represented

by DANIEL J. SHIH, JORDAN CONNORS, Seattle, WA.

BRYANT C. BOREN, JR., Baker Botts LLP, Palo Alto,

CA, argued for defendants-appellees. Also represented by

RYAN BANGERT, JOHNSON KURIAKOSE KUNCHERIA, KURT

M. PANKRATZ, Dallas, TX; MICHAEL HAWES, Houston, TX.

______________________

Before NEWMAN, O’MALLEY, and CHEN, Circuit Judges.

2 BASCOM GLOBAL INTERNET v. AT&T MOBILITY LLC

Opinion for the court filed by Circuit Judge CHEN.

Opinion concurring in the result filed by Circuit Judge

NEWMAN.

CHEN, Circuit Judge.

BASCOM Global Internet Services, Inc. appeals from

the grant of a motion to dismiss under Rule 12(b)(6) of the

Federal Rules of Civil Procedure (FRCP), in which the

United States District Court for the Northern District of

Texas held that BASCOM failed to state a claim upon

which relief can be granted because the claims of U.S.

Patent No. 5,987,606 are invalid as a matter of law under

35 U.S.C. § 101. BASCOM has alleged 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. We find

nothing in the intrinsic record to refute that allegation as

a matter of law. We therefore vacate the district court’s

order dismissing BASCOM’s complaint, and remand for

further proceedings.

BACKGROUND

The ’606 patent was filed March 19, 1997. Back in

1997, the Internet was known to contain information that

consumers, students, and businesses wanted to access.

’606 patent, 1:16–17. As the patent describes in the

“Background of the Present Invention” section, web

browsers “such as the Netscape Navigator™ or the Mi-

crosoft Explorer™” allowed users to access websites in the

form of HTML files. Id. at 1:18–24; see also id. at 1:23–25

(“Other software utilities for accessing Internet content

include News Groups, FTPs, IRC chat rooms and e-

mail.”). Some websites, however, contained information

deemed unsuitable for some users. Corporations had the

need to prevent their employees from accessing websites

with certain types of information, such as “entertainment

oriented sites,” while allowing them to continue to access

BASCOM GLOBAL INTERNET v. AT&T MOBILITY LLC 3

“technical or business sites,” and parents had the need to

prevent their family from accessing websites containing

“sexually explicit or other objectionable information.” Id.

at 1:30–40.

The computer industry responded to this need by de-

veloping a software tool that allowed control over the type

of information received over the Internet. The software

tool inspected a user’s request to access a website and

applied one or more filtering mechanisms: “exclusive

filtering (‘black-listing’) which prevents access to all sites

on a predetermined list of Internet sites; inclusive filter-

ing (‘white-listing’) which allows access only to a prede-

termined list of Internet sites; and word-screening or

phrase-screening which prevents access to web site ‘pages’

which contain any word or phrase on a predetermined

list.” Id. at 1:41–50.

According to the ’606 patent, filtering software was

first placed on local computers, such that each local

computer had its own tool for filtering websites (or other

Internet content) requested by the operator of the com-

puter. Id. at 1:58–63, Figure 8. Although the filtering

software worked for its intended purpose, there were

logistical problems with locating a tool for filtering Inter-

net content on each local computer: (1) “it is subject to be

modified or thwarted by a computer literate end-user,

such as a teenager or corporate employee”; (2) “it is diffi-

cult and time consuming to install on every end-user’s

client machine”; (3) “[it] is dependent upon individual

end-user hardware and operating systems and requires

modified software for different end-user platforms”; and

(4) “the client database [ ] must be updated frequently to

track changes in the content of various Internet sites”

which “requires frequent downloads from the Internet or

disk updates.” Id. at 2:1–12.

To overcome some of the disadvantages of installing

filtering software on each local computer, another prior

4 BASCOM GLOBAL INTERNET v. AT&T MOBILITY LLC

art system relocated the filter to a local server. Id. at

2:13–23, Figure 9. For example, a corporation with one

connection to the Internet might have placed a server

between the computers of its employees and the Internet

connection. In this configuration, many individual com-

puters with different hardware and operating systems

were connected to one local server over a local area net-

work. When employees at their individual computers

requested websites from the Internet, the local server

would filter all requests for Internet content. Id. “[A]

computer literate end-user” therefore could no longer

easily “modify or thwart” the filtering tool to gain access

to blocked websites. Id. at 2:25–30. However, the one-

size-fits-all filter on the local server was not ideal because

“a single set of filtering criteria is often not appropriate

for all of the end-users.” Id. at 2:20–23. This solution for

filtering Internet content also “require[d] time-consuming

local service to initiate and maintain” and “software

implementing the filtering functions [was] typically tied

to a single local area network or a local server platform.”

Id. at 2:23–35.

Finally, some Internet Service Providers (ISPs), such

as “America Online,” installed a filter on their remote

servers, which allowed the ISP to prevent its subscribers

from accessing certain websites. Id. at 2:36–39. Howev-

er, this solution continued to use a single set of filtering

criteria for all requests for websites from all of its sub-

scribers. Id. at 2:39–49.

The ’606 patent describes its invention as combining

the advantages of the then-known filtering tools while

avoiding their drawbacks. The claimed filtering system

avoids being “modified or thwarted by a computer literate

end-user,” and avoids 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 plat-

form” by installing the filter at the ISP server. Id. at 2:1–

12, 2:23–35, 2:55–65. And, unlike the filtering tools that

BASCOM GLOBAL INTERNET v. AT&T MOBILITY LLC 5

existed on local servers and remote ISP servers at the

time, the claimed filtering tool retains the advantage of a

filtering tool that is located on each local computer; indi-

viduals are able to customize how requests for Internet

content from their own computers are filtered instead of

having a universal set of filtering rules applied to every-

one’s requests. Id. at 2:52–65 (“[T]he present inven-

tion . . . provid[es] an Internet access system which: . . .

allows users to select filtering schemes, such as inclusive

or exclusive filtering, and filtering elements, such as ISP

provided inclusive-lists or exclusive-lists, or their own

customized inclusive-lists or exclusive-lists . . . .”).

The claimed invention is able to provide individually

customizable filtering at the remote ISP server by taking

advantage of the technical capability of certain communi-

cation networks. In these networks, the ISP is able to

associate an individual user with a specific request to

access a website (or other Internet content), and can

distinguish that user’s requests from other users’ re-

quests. One way that the ISP is able to make this associ-

ation, as described in the ’606 patent, is by requiring each

user to first complete a log-in process with the ISP server.

Id. at 4:35–38. After a user has logged in, the ISP server

can associate the user with a request to access a specific

website. Id. at 5:60–62 (“In the TCP/IP protocol, each

Internet access request or ‘packet’ includes the [website]

from which content is requested.”). Because the filtering

tool on the ISP server contains each user’s customized

filtering mechanism, the filtering tool working in combi-

nation with the ISP server can apply a specific user’s

filtering mechanism to the websites requested by that

user. Id. at 4:35–50. To summarize, the ISP server

receives a request to access a website, associates the

request with a particular user, and identifies the request-

ed website. The filtering tool then applies the filtering

mechanism associated with the particular user to the

requested website to determine whether the user associ-

6 BASCOM GLOBAL INTERNET v. AT&T MOBILITY LLC

ated with that request is allowed access to the website.

The filtering tool returns either the content of the website

to the user, or a message to the user indicating that the

request was denied. The ’606 patent describes its filtering

system as a novel advance over prior art computer filters,

in that no one had previously provided customized filters

at a remote server.

The claims of the ’606 patent generally recite a system

for filtering Internet content. The claimed filtering sys-

tem 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 plural-

ity of sets of filtering elements, thereby allowing individ-

ual network accounts to customize the filtering of Internet

traffic associated with the account. For example, one

filtering scheme could be “a word-screening type filtering

scheme” and one set of filtering elements (from a plurality

of sets) could be a “master list[ ] of disallowed words or

phrases together with [an] individual [list of] words,

phrases or rules.” Id. at 4:30–35. According to BASCOM,

the ’606 patent contains two groups of claims: a first

group that is limited to individual-customizable filtering

on a remote ISP server, and a second group that is further

limited to a hybrid filtering scheme implemented on the

ISP server comprised of a master-inclusive list, an indi-

vidual-customizable set of exclusive lists, and an individ-

ual-customizable set of inclusive lists. For the

individually customizable filtering claims, BASCOM

points to claim 1 as instructive.

1. 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 net-

work access requests for said individual

controlled access network accounts;

BASCOM GLOBAL INTERNET v. AT&T MOBILITY LLC 7

at least one filtering scheme;

a plurality of sets of logical filtering ele-

ments; 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 filter-

ing scheme and at least one set of filtering

elements, said ISP server further receiv-

ing said network access requests from said

client computer and executing said associ-

ated filtering scheme utilizing said associ-

ated set of logical filtering elements.

Id. at 6:62–7:10. For the hybrid filtering scheme claims,

BASCOM points to claim 23, which depends on claim 22,

as instructive.

22. An ISP server for filtering content forwarded

to controlled access network account generating

network access requests at a remote client com-

puter, each network access request including a

destination address field, said ISP server compris-

ing:

a master inclusive-list of allowed sites;

a plurality of sets of exclusive-lists of ex-

cluded sites, each controlled access net-

work account associated with at least one

set of said plurality of exclusive-lists of ex-

cluded sites; and

a filtering scheme, said filtering scheme

allowing said network access request if

said destination address exists on said

master inclusive-list but not on said at

least one associated exclusive-list, where-

by said controlled access accounts may be

8 BASCOM GLOBAL INTERNET v. AT&T MOBILITY LLC

uniquely associated with one or more sets

of excluded sites.

23. The ISP server of claim 22 further comprising:

a plurality of inclusive-lists of allowed

sites, each controlled access user associat-

ed with at least one of said plurality of in-

clusive-lists of allowed sites, said filtering

program further allowing said network ac-

cess request if said requested destination

address exists on said at least one associ-

ated inclusive-list.

Id. at 8:63–9:18.

BASCOM sued AT&T Inc. for patent infringement,

added AT&T Mobility LLC and AT&T Corp. (collectively,

AT&T) as defendants, and then dismissed AT&T Inc.

from the case. AT&T moved to dismiss BASCOM’s com-

plaint under FRCP 12(b)(6), on the basis that each claim

of the ’606 patent was invalid under 35 U.S.C. § 101.

Applying the Supreme Court’s decision in Alice Corp. Pty.

Ltd. v. CLS Bank International, 134 S. Ct. 2347 (2014),

AT&T argued that the claims were directed to the ab-

stract idea of “filtering content,” “filtering Internet con-

tent,” or “determining who gets to see what,” each of

which is a well-known “method of organizing human

activity” like the intermediated settlement concept that

was held to be an abstract idea in Alice. BASCOM Global

Internet Servs., Inc. v. AT&T Mobility LLC, 107 F. Supp.

3d 639, 646 (N.D. Tex. 2015) (District Court Order).

AT&T analogized the idea of filtering content to a parent

or librarian forbidding children from reading certain

books, and argued that performing the filtering on the

Internet does not make the idea nonabstract. Finally,

AT&T pointed to each individual limitation of the claims

and argued that none of the limitations transforms the

abstract idea of filtering content into patent-eligible

subject matter because they do no more than recite rou-

BASCOM GLOBAL INTERNET v. AT&T MOBILITY LLC 9

tine and conventional activities performed by generic

computer components.

BASCOM responded by arguing that the claims of the

’606 patent are not directed to an abstract idea because

they address a problem arising in the realm of computer

networks, and provide a solution entirely rooted in com-

puter technology, similar to the claims at issue in DDR

Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed.

Cir. 2014). BASCOM characterized the recent Supreme

Court and Federal Circuit decisions invalidating claims

under § 101 as focusing on claims that are directed to a

longstanding fundamental practice that exists independ-

ent of computer technology. BASCOM asserted that its

claims are different because filtering Internet content was

not longstanding or fundamental at the time of the inven-

tion and is not independent of the Internet. Finally,

BASCOM argued that, even if the lower court found that

the claims are directed to an abstract idea, the inventive

concept is found in the ordered combination of the limita-

tions: a “special ISP server that receives requests for

Internet content, which the ISP server then associates

with a particular user and a particular filtering scheme

and elements.” District Court Order, 107 F. Supp. 3d at

652–53.

The district court agreed with AT&T. The district

court found that the claims were directed to the abstract

idea of “filtering content” because “content provided on

the Internet is not fundamentally different from content

observed, read, and interacted with through other medi-

ums like books, magazines, television, or movies.” Id. at

650. In its search for an “inventive concept,” the district

court first determined that no individual limitation was

inventive because each limitation, in isolation, was a

“well-known, generic computer component[ ]” or a stand-

ard filtering mechanism. Id. at 654. The district court

then determined that the limitations in combination were

not inventive either because “[f]iltering software, appar-

10 BASCOM GLOBAL INTERNET v. AT&T MOBILITY LLC

ently composed of filtering schemes and filtering ele-

ments, was well-known in the prior art” and “using ISP

servers to filter content was well-known to practitioners.”

Id. The district court also noted that the absence of

specific structure for the generic computer components

“raises the likelihood that such claims could preempt

every filtering scheme under the sun.” Id. at 655.

BASCOM appeals. We have jurisdiction under

28 U.S.C. § 1295(a)(1).

STANDARD OF REVIEW

We review a district court’s dismissal for failure to

state a claim under the law of the regional circuit. In re

Bill of Lading Transmission & Processing Sys. Patent

Litig., 681 F.3d 1323, 1331 (Fed. Cir. 2012). The Fifth

Circuit reviews challenges to a dismissal for failure to

state a claim under FRCP 12(b)(6) de novo, taking the

allegations of the complaint to be true. Scanlan v. Texas

A&M Univ., 343 F.3d 533, 536 (5th Cir. 2003). We review

the district court’s determination of patent-eligibility

under § 101 de novo. DDR, 773 F.3d at 1255.

DISCUSSION

A patent may be obtained for “any new and useful

process, machine, manufacture, or composition of matter,

or any new and useful improvement thereof.”

35 U.S.C. § 101. The Supreme Court has “long held that

this provision contains an important implicit exception:

Laws of nature, natural phenomena, and abstract ideas

are not patentable.” Ass’n for Molecular Pathology v.

Myriad Genetics, Inc., 133 S. Ct. 2107, 2116 (2013) (quot-

ing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,

132 S. Ct. 1289, 1293 (2012)) (internal brackets omitted).

The Supreme Court has also consistently held that § 101

provides a basis for a patentability/validity determination

that is independent of—and on an equal footing with—

any other statutory patentability provision. Mayo, 132 S.

BASCOM GLOBAL INTERNET v. AT&T MOBILITY LLC 11

Ct. at 1303–04 (citing Bilski v. Kappos, 561 U.S. 593

(2010); Diamond v. Diehr, 450 U.S. 175 (1981), Parker v.

Flook, 437 U.S. 584 (1978); Gottschalk v. Benson, 409 U.S.

63 (1972); H.R. Rep. No. 82-1923, at 6 (1952)). Courts

may therefore dispose of patent-infringement claims

under § 101 whenever procedurally appropriate. See

DDR, 773 F.3d at 1263; Content Extraction & Transmis-

sion LLC v. Wells Fargo Bank, Nat. Ass’n, 776 F.3d 1343,

1351 (Fed. Cir. 2014), cert. denied, 136 S. Ct. 119 (2015).

In Mayo, the Supreme Court set forth a two-step analyti-

cal 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).

We have found software-related patents eligible under

both steps of the test Alice sets out. We found a patent to

a particular improvement to a database system patent-

eligible under step one in Enfish LLC v. Microsoft Corp.,

2016 WL 2756255, at *8 (Fed. Cir. May 12, 2016). There,

we found claim language reciting the invention’s specific

improvements to help our determination in step one of the

Alice framework that the invention was directed to those

specific improvements in computer technology. But we

also recognized that, “in other cases involving computer-

related claims, there may be close calls about how to

characterize what the claims are directed to.” Id. “In

such cases,” we noted, “an analysis of whether there are

arguably concrete improvements in the recited computer

technology could take place under step two.” Id. That is,

some inventions’ basic thrust might more easily be under-

stood as directed to an abstract idea, but under step two

of the Alice analysis, it might become clear that the

12 BASCOM GLOBAL INTERNET v. AT&T MOBILITY LLC

specific improvements in the recited computer technology

go beyond “well-understood, routine, conventional activ-

it[ies]” and render the invention patent-eligible. See

Alice, 134 S. Ct. at 2359. We took this step-two path in

DDR. 773 F.3d at 1259 (“When the limitations of the . . .

claims are taken together as an ordered combination, the

claims recite an invention that is not merely the routine

or conventional use of the Internet.”).

The claims of the ’606 patent are directed to filtering

content on the Internet. Specifically, claim 1 is directed to

a “content filtering system for filtering content retrieved

from an Internet computer network.” ’606 patent, 6:62–

64. Claim 22 similarly is directed to an “ISP server for

filtering content.” Id. at 8:63. The specification reinforces

this notion by describing the invention as relating “gener-

ally to a method and system for filtering Internet con-

tent.” Id. at 1:7–11. We agree with the district court that

filtering content is an abstract idea because it is a long-

standing, well-known method of organizing human behav-

ior, similar to concepts previously found to be abstract.

See Intellectual Ventures I LLC v. Capital One Bank

(USA), 792 F.3d 1363, 1367 (Fed. Cir. 2015) (holding that

“tracking financial transactions to determine whether

they exceed a pre-set spending limit (i.e., budgeting)” is

an abstract idea that “is not meaningfully different from

the ideas found to be abstract in other cases . . . involving

methods of organizing human activity”); see also Content

Extraction, 776 F.3d at 1347 (finding that “1) collecting

data, 2) recognizing certain data within the collected data

set, and 3) storing that recognized data in a memory” was

an abstract idea because “data collection, recognition, and

storage is undisputedly well-known” and “humans have

always performed these functions”); Digitech Image

Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344,

1350 (Fed. Cir. 2014) (finding that “a process of organiz-

ing information through mathematical correlations” is an

abstract idea). An abstract idea on “an Internet computer

BASCOM GLOBAL INTERNET v. AT&T MOBILITY LLC 13

network” or on a generic computer is still an abstract

idea. See Intellectual Ventures I, 792 F.3d at 1368 n.2

(collecting cases).

BASCOM argues that the claims are directed to some-

thing narrower: the specific implementation of filtering

content set forth in the claim limitations. Specifically,

BASCOM asserts that claim 1 is “directed to the more

specific problem of providing Internet-content filtering in

a manner that can be customized for the person attempt-

ing to access such content while avoiding the need for

(potentially millions of) local servers or computers to

perform such filtering and while being less susceptible to

circumvention by the user,” and claim 23 is directed to

“the even more particular problem of structuring a filter-

ing scheme not just to be effective, but also to make user-

level customization remain administrable as users are

added instead of becoming intractably complex.” Appel-

lant’s Br. at 14. We recognize that this court sometimes

incorporates claim limitations into its articulation of the

idea to which a claim is directed. See Enfish, 2016 WL

2756255 at *6 (relying on a step of an algorithm corre-

sponding to a means-plus-function limitation in defining

the idea of a claim for step-one purposes). This case,

unlike Enfish, presents a “close call[ ] about how to char-

acterize what the claims are directed to.” See id. at *8.

The Enfish claims, understood in light of their specific

limitations, were unambiguously directed to an improve-

ment in computer capabilities. See id. at *5. Here, in

contrast, the claims and their specific limitations do not

readily lend themselves to a step-one finding that they

are directed to a nonabstract idea. We therefore defer our

consideration of the specific claim limitations’ narrowing

effect for step two.

We now turn to step two, and the search for an “in-

ventive concept.” The “inventive concept” may arise in

one or more of the individual claim limitations or in the

ordered combination of the limitations. Alice, 134 S. Ct.

14 BASCOM GLOBAL INTERNET v. AT&T MOBILITY LLC

at 2355. An inventive concept that transforms the ab-

stract idea into a patent-eligible invention must be signif-

icantly more than the abstract idea itself, and cannot

simply be an instruction to implement or apply the ab-

stract idea on a computer. Id. at 2358.

The district court looked at each limitation individual-

ly and noted that the limitations “local client computer,”

“remote ISP server,” “Internet computer network,” and

“controlled access network accounts” are described in the

specification as well-known generic computer components.

District Court Order, 107 F. Supp. 3d at 654; see ’606

patent, 1:58–2:12 (describing a prior art filtering system

on a local client computer); id. at 2:36–45 (describing a

prior art filtering system on an ISP server that uses “a

single set of filtering criteria for all of their controlled-

access end-users”). The district court also noted that a

filtering system is described in the specification as “any

type of code which may be executed” along with database

entries. District Court Order, 107 F. Supp. 3d at 654; see

’606 patent, 4:28–30 (“[I]t will be obvious to one of ordi-

nary skill in the art that the filtering scheme can be any

of a number of known-schemes, or hybrids thereof.”). The

district court then looked at the limitations collectively,

and held that “[f]iltering software, apparently composed

of filtering schemes and filtering elements, was well-

known in the prior art,” and “using ISP servers to filter

content was well-known to practitioners.” District Court

Order, 107 F. Supp. 3d at 654. The district court thus

concluded that BASCOM had not asserted adequately

that the claims disclose an inventive concept because the

limitations, “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.” Id. at 655.

We agree with the district court that the limitations of

the claims, taken individually, recite generic computer,

BASCOM GLOBAL INTERNET v. AT&T MOBILITY LLC 15

network and Internet components, none of which is in-

ventive by itself. BASCOM does not assert that it invent-

ed local computers, ISP servers, networks, network

accounts, or filtering. Nor does the specification describe

those elements as inventive.

However, we disagree with the district court’s analy-

sis of the ordered combination of limitations. In light of

Mayo and Alice, it is of course now standard for a § 101

inquiry to consider whether various claim elements

simply recite “well-understood, routine, conventional

activit[ies].” Alice, 134 S. Ct. at 2359. The district court’s

analysis in this case, however, looks similar to an obvi-

ousness analysis under 35 U.S.C. § 103, except lacking an

explanation of a reason to combine the limitations as

claimed. 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 con-

cept can be found in the non-conventional and non-generic

arrangement of known, conventional pieces.

The inventive concept described and claimed in the

’606 patent is the installation of a filtering tool at a specif-

ic location, remote from the end-users, with customizable

filtering features specific to each end user. This design

gives the filtering tool both the benefits of a filter on a

local computer and the benefits of a filter on the ISP

server. BASCOM explains that the inventive concept

rests on taking advantage of the ability of at least some

ISPs to identify individual accounts that communicate

with the ISP server, and to associate a request for Inter-

net content with a specific individual account. ’606 patent

at 4:35–38 (“FIG. 3 shows the ISP server 100 process for

accepting a log-in request 200, the ISP server 100 first

verifies 201 whether the user is a registered subscriber.”);

id. at 5:60–62 (“In the TCP/IP protocol, each Internet

access request or ‘packet’ includes the [website] from

which content is requested.”); Oral Argument, 17:30–

17:50 (counsel for BASCOM agreeing that the ISP server

16 BASCOM GLOBAL INTERNET v. AT&T MOBILITY LLC

is able to associate individual accounts with website

requests because, “due to the TCP/IP protocol, the server

is able to recognize the address of the particular user”).

According to BASCOM, the inventive concept harnesses

this technical feature of network technology in a filtering

system by associating individual accounts with their own

filtering scheme and elements while locating the filtering

system on an ISP server. See Research Corp. Techs. v.

Microsoft Corp., 627 F.3d 859, 869 (Fed. Cir. 2010)

(“[I]nventions with specific applications or improvements

to technologies in the marketplace are not likely to be so

abstract that they override the statutory language and

framework of the Patent Act.”). On this limited record,

this specific method of filtering Internet content cannot be

said, as a matter of law, to have been conventional or

generic.

The 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 com-

puter components. Such claims would not contain an

inventive concept. See CyberSource Corp. v. Retail Deci-

sions, Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011) (reason-

ing that the use of the Internet to verify a credit card

transaction does not meaningfully add to the abstract

idea of verifying the transaction). Nor do the claims

preempt all ways of filtering content on the Internet;

rather, they recite a specific, discrete implementation of

the abstract idea of filtering content. 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. As explained earlier, prior art filters were

either susceptible to hacking and dependent on local

hardware and software, or confined to an inflexible one-

size-fits-all scheme. BASCOM asserts that the inventors

recognized there could be a filter implementation versa-

tile enough that it could be adapted to many different

BASCOM GLOBAL INTERNET v. AT&T MOBILITY LLC 17

users’ preferences while also installed remotely in a single

location. Thus, construed in favor of the nonmovant—

BASCOM—the claims are “more than a drafting effort

designed to monopolize the [abstract idea].” Alice, 134 S.

Ct. at 2357. Instead, the claims may be read to “im-

prove[ ] an existing technological process.” Id. at 2358

(discussing the claims in Diehr, 450 U.S. 175).

This court’s recent case law on step two of the Alice

test further establishes the patent-eligibility of the claims

before us. As one would expect, BASCOM attempts to

analogize its claims to the claims in DDR, while distin-

guishing its claims from the claims in other cases, such as

Content Extraction and Accenture Global Services, GmbH

v. Guidewire Software, Inc., 728 F.3d 1336 (Fed. Cir.

2013). In turn, AT&T attempts the opposite comparisons,

distinguishing the ’606 patent claims from the claims in

DDR, and analogizing the claims with claims from other

cases such as OIP Technologies, Inc. v. Amazon.com, Inc.,

788 F.3d 1359 (Fed. Cir. 2015), Intellectual Ventures I,

and Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed.

Cir. 2014).

Turning first to DDR, we held that DDR’s patent

claimed a technical solution to a problem unique to the

Internet—websites instantly losing views upon the click

of a link, which would send the viewer across cyberspace

to another company’s website. 773 F.3d at 1248–50. The

claimed invention solved that problem in a particular,

technical way by sending the viewer to a hybrid webpage

that combined visual elements of the first website with

the desired content from the second website that the

viewer wished to access. Id. at 1257–59. The creation of

this hybrid webpage that co-displays the look and feel of

the first website with the desired content from the second

website required a specific technical solution that did

more than claim all implementations for retaining web

viewers.

18 BASCOM GLOBAL INTERNET v. AT&T MOBILITY LLC

Although the invention in DDR’s patent was engi-

neered in the context of retaining potential customers, the

invention was not claiming a business method per se, but

was instead claiming a technical way to satisfy an exist-

ing problem for website hosts and viewers. Similarly,

although the invention in the ’606 patent is engineered in

the context of filtering content, the invention is not claim-

ing the idea of filtering content simply applied to the

Internet. The ’606 patent is instead claiming a technolo-

gy-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. By taking a prior art filter solution (one-size-

fits-all filter at the ISP server) and making it more dy-

namic and efficient (providing individualized filtering at

the ISP server), the claimed invention represents a “soft-

ware-based invention[ ] that improve[s] the performance

of the computer system itself.” See Brief for United States

as Amicus Curiae in Support of Respondents at 30–31,

Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347

(2014) (No. 13-298), 2014 WL 828034.

Turning next to OIP, the claims at issue in that case

were directed to the abstract idea of offer-based price

optimization which was implemented by “‘sending a first

set of electronic messages over a network to devices,’ the

devices being ‘programmed to communicate,’ storing test

results in a ‘machine-readable medium,’ and ‘using a

computerized system . . . to automatically determine’ an

estimated outcome and setting a price.” 788 F.3d at 1363.

In other words, the claims simply required the perfor-

mance of the abstract idea of offer-based price optimiza-

tion on generic computer components using conventional

computer activities. The intrinsic record in OIP con-

firmed that the invention was simply the generic automa-

tion of traditional price-optimization techniques. Id.

Unlike the claims in the ’606 patent, the patent in OIP

BASCOM GLOBAL INTERNET v. AT&T MOBILITY LLC 19

was not limited to a specific technical solution of the

abstract idea.

The other cases BASCOM and AT&T discuss similar-

ly claim an abstract idea implemented on generic comput-

er components, without providing a specific technical

solution beyond simply using generic computer concepts

in a conventional way. The claims in Intellectual Ventures

I preempted all use of the claimed abstract idea on “the

Internet, on a generic computer.” 792 F.3d at 1371. The

claims in Content Extraction preempted all use of the

claimed abstract idea on well-known generic scanning

devices and data processing technology. 776 F.3d at 1348.

The claims in Ultramercial preempted all use of the

claimed abstract idea on the Internet. 772 F.3d at 715–

16. And the claims in Accenture preempted all use of the

claimed abstract idea on generic computer components

performing conventional activities. 728 F.3d at 1344–45.

Our decisions further explained that simply because some

of the claims narrowed the scope of protection through

additional “conventional” steps for performing the ab-

stract idea, they did not make those claims any less

abstract. See, e.g., Ultramercial, 772 F.3d at 715 (“We

conclude that the limitations of the ’545 claims do not

transform the abstract idea that they recite into patent-

eligible subject matter because the claims simply instruct

the practitioner to implement the abstract idea with

routine, conventional activity.”). As explained above,

construed in favor of BASCOM as they must be in this

procedural posture, the claims of the ’606 patent do not

preempt the use of the abstract idea of filtering content on

the Internet or on generic computer components perform-

ing conventional activities. The claims carve out a specif-

ic location for the filtering system (a remote ISP server)

and require the filtering system to give users the ability

to customize filtering for their individual network ac-

counts.

20 BASCOM GLOBAL INTERNET v. AT&T MOBILITY LLC

CONCLUSION

While the claims of the ’606 patent are directed to the

abstract idea of filtering content, BASCOM has adequate-

ly alleged that the claims pass step two of Alice’s two-part

framework. BASCOM has alleged that an inventive

concept can be found in the ordered combination of claim

limitations that transform the abstract idea of filtering

content into a particular, practical application of that

abstract idea. We find nothing on this record that refutes

those allegations as a matter of law or justifies dismissal

under Rule 12(b)(6). We therefore vacate the district

court’s order granting AT&T’s motion to dismiss under

FRCP 12(b)(6) and remand so that the case may proceed.

VACATED AND REMANDED

COSTS

No costs.

United States Court of Appeals

for the Federal Circuit

______________________

BASCOM GLOBAL INTERNET SERVICES, INC.,

Plaintiff-Appellant

v.

AT&T MOBILITY LLC, AT&T CORP.,

Defendants-Appellees

______________________

2015-1763

______________________

Appeal from the United States District Court for the

Northern District of Texas in No. 3:14-cv-03942-M, Judge

Barbara M.G. Lynn.

______________________

NEWMAN, Circuit Judge, concurring in the result.

I agree with the court that the claims of the Bascom

patent are eligible for participation in the system of

patents. Thus the case requires remand to the district

court, so that the rules and conditions of patentability can

be applied to the Bascom claims. However, it has become

increasingly apparent, as various factual situations have

been brought into Section 101 challenges, that these new

litigation opportunities have led to judicial protocols that

are time-consuming and usually unnecessary. As this

case illustrates, these cumbersome procedures for sepa-

rate determinations of patent eligibility and patentability

have added to the cost and uncertainty of patent-

supported commerce, with no balancing benefit.

2 BASCOM GLOBAL INTERNET v. AT&T MOBILITY LLC

I write separately to urge a more flexible approach to

the determination of patent eligibility, for the two-step

protocol for ascertaining whether a patent is for an “ab-

stract idea” is not always necessary to resolve patent

disputes. 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.

That is, 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, initial decision directed to patentability may

resolve or moot any issue of eligibility. Initial determina-

tion of eligibility often does not resolve patentability,

whereas initial determination of patentability issues

always resolves or moots eligibility.

A

Section 101 defines patent-eligible subject

matter as any new and useful process, ma-

chine, manufacture, or composition of matter

Section 101 states, in broad terms, the subject matter

eligible to participate in the system of patents:

35 U.S.C. § 101. Inventions patentable—

Whoever invents or discovers any new and useful

process, machine, manufacture, or composition of

matter, or any new and useful improvement

thereof, may obtain a patent therefor, subject to

the conditions and requirements of this title.

Discoveries and inventions that are within the statutory

categories are eligible for patenting, upon compliance

with the conditions of Title 35. The Court has recognized

the breadth of subject matter implemented by Section

101, stating:

BASCOM GLOBAL INTERNET v. AT&T MOBILITY LLC 3

In choosing such expansive terms . . . modified by

the comprehensive “any,” Congress plainly con-

templated that the patent laws would be given

wide scope.

Diamond v. Chakrabarty, 447 U.S. 303, 308 (1980).

An important aspect of Title 35 is that it discarded

the judge-made usage of “invention” and “flash of creative

genius,” and replaced it with the statutory standard of

unobviousness. “Nowhere in the entire act is there any

reference to a requirement of ‘invention’ and the drafters

did this deliberately in an effort to free the law and law-

yers from bondage to that old and meaningless term.”

Giles S. Rich, Principles of Patentability, 28 GEO. WASH.

L. REV. 393, 405 (1960).

On this history, the emphasis on eligibility has led to

erratic implementation in the courts. An example is seen

in this case, where the district court and this court differ

in their view of “inventive concept” for the Bascom patent.

I propose returning to the letter of Section 101, where

eligibility is recognized for “any new and useful process,

machine, manufacture, or composition of matter.” It

follows that if any of these classes is claimed so broadly or

vaguely or improperly as to be deemed an “abstract idea,”

this could be resolved on application of the requirements

and conditions of patentability. This determination would

avoid resolving an undefined “inventive concept” applied

to eligibility.

Although there is concern that broad claims may

preempt development by others of improvements and

variants of a broad invention, and limiting patentable

scope may restrict preemption, it is not the policy of

patent law to permit only narrow claims when an inven-

tor has made a new, broad invention. When an invention

is new and unobvious and described and enabled, com-

mensurate patent rights are not barred on policy grounds.

4 BASCOM GLOBAL INTERNET v. AT&T MOBILITY LLC

B

Patentability v. Eligibility

A new and useful process or machine or manufacture

or composition of matter is not an abstract idea, and if the

claims are deemed to be so broad as to be abstract, appli-

cation of the requirements of patentability is a direct path

to resolution of validity disputes. Claims that are impre-

cise or that read on prior art or that are unsupported by

description or that are not enabled raise questions of

patentability, not eligibility.

35 U.S.C. § 112(a) requires a written description in

“full, clear, concise, and exact terms,” and § 112(b) re-

quires “claims particularly pointing out and distinctly

claiming the subject matter” of the invention. The pro-

cess, machine, manufacture, or composition of Section 101

must comply with Section 112. Subject matter that

complies with Section 112 averts the generality or vague-

ness or imprecision or over-breadth that characterize

abstract ideas. These are conditions of patentability, not

of eligibility. The “conditions and requirements of this

title” weed out the abstract idea.

The Court recognized that “all inventions at some lev-

el embody, use, reflect, rest upon, or apply . . . abstract

ideas.” Mayo Collaborative Servs. v. Prometheus Labs.,

Inc., 132 S. Ct. 1289, 1293 (2012). I have come upon no

guide to when a claim crosses the boundary between

unacceptable abstractness and acceptable specificity.

Experience with this aspect demonstrates its imprecision.

This conundrum is resolved on application of the criteria

of patentability. Nor is this a new observation: “precedent

illustrates that pragmatic analysis of section 101 is facili-

tated by considerations analogous to those of section 102

and 103 as applied to the particular case.” Internet Pa-

tents Corp. v. Active Network, Inc., 790 F.3d 1343, 1347

(Fed. Cir. 2015) (referring to the specification and prior

art to determine abstractness of claims).

BASCOM GLOBAL INTERNET v. AT&T MOBILITY LLC 5

In this case, as the panel majority recites, the district

court found that “filtering software, apparently composed

of filtering schemes and filtering elements, was well-

known in the prior art,” Maj. Op. at 9–10, 14, citing

BASCOM Global Internet Servs., Inc. v. AT&T Mobility

LLC, 107 F. Supp. 3d 639, 654 (N.D. Tex. 2015). The

district court found reason to combine known selective

filtration procedures. Id. AT&T argues that these find-

ings, as they relate to patentability, are correct. Bascom

states that it did not have a full opportunity to present

evidence concerning patentability. Accepting Bascom’s

position, remand is appropriate.

C

AT&T’s motion to dismiss

The district court held that “the Court looks at the ‘el-

ements of each claim both individually and ‘as an ordered

combination’ to determine whether the additional ele-

ments [beyond those that recite the abstract idea of

filtering content] ‘transform the nature of the claim’ into a

patent-eligible application.’” BASCOM, 107 F. Supp. 3d

at 654. The district court found that the Bascom filtration

method was not an “inventive concept” and held that the

Bascom claims were not eligible subject matter under

Section 101. Id. at 644.

In arguing “inventive concept,” both sides presented

arguments that would also be relevant to patentability.

These arguments are repeated on this appeal. AT&T,

supporting the “abstract idea” position on which it pre-

vailed before the district court, argues that content filtra-

tion was a generally known concept, and thus was an

“abstract idea” under Alice step one. AT&T argues that

the Bascom filtration method is not an “inventive concept”

under step two. AT&T also argues that the Bascom

claims are invalid under Sections 103 and 112.

6 BASCOM GLOBAL INTERNET v. AT&T MOBILITY LLC

Bascom states that for issues under Sections 103 and

112, additional evidence would be provided, evidence not

needed for response to a motion to dismiss for abstract-

ness. We agree that Bascom must be accorded the oppor-

tunity to litigate these issues directly, rather than as

overflow from the eligibility debate.

On appellate review, I agree with the majority that

the Bascom claims contain an “inventive concept” in the

claims’ “ordered combination of limitations,” and that this

establishes eligibility. In the district court, the only issue

that was finally decided is that of eligibility. Thus re-

mand is the appropriate next step. However, I again

point to the increased efficiency, and savings in cost and

time, by direct resolution of patentability. The Court’s

rulings in Alice and Mayo do not require that every broad-

ly claimed patent must be treated in two separate litiga-

tion procedures, if charged with abstractness.

While the two-step protocol helps to decide whether a

particular claim is “eligible” for patenting, we should

clarify the district court’s authority to resolve the issues of

patent validity directly. Direct application to the Bascom

claims of the law of sections 102, 103, or 112, could have

resolved this dispute in one litigation cycle of trial and

appeal, instead of the repeated effort now required.

In sum, when evidence of patentability is needed or

presented to resolve a challenge to eligibility of claims to a

new method or machine or manufacture or composition,

the district court and the parties should have the flexibil-

ity to resolve patentability at this threshold. If the claims

are unpatentable, any issue of abstractness, however

defined, is mooted. And if the subject matter is patenta-

ble, it is not an abstract idea. We should clarify that such

expediency is an available response to challenges on the

ground of “abstract idea.”