Law.com Subscribers SAVE 30%

Call 855-808-4530 or email [email protected] to receive your discount on a new subscription.

IP News

By Howard J. Shire and Ksenia Takhistova

A Patent on the Method of Filtering Internet Content Survives '101 Challenge

The Federal Circuit, in Bascom Global Internet Services, Inc. v. AT&T Mobility LLC, case 15-1763 (June 27, 2016), recently provided an important clarification to step 2 of the Mayo '101patentability test set forth in Mayo Collaborative Servs. v. Prometheus Laboratories, Inc., 132 S. Ct. 1289 (2012). The case came on appeal from the district court in the Northern District of Texas, which dismissed the patent-infringement complaint under Rule 12(b)(6) for failure to state a claim for relief, agreeing with defendant AT&T that the asserted patent was invalid under '101. Bascom's patent, filed in 1997, is directed to an Internet filtering software tool that allows control over the type of information that certain groups of users are able to receive over the Internet. Several filtering tools were in existence at the time the patent was filed, and Bascom's invention combined their advantages and avoided the 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 platform' by installing the filter at the ISP server.” Slip op. at 4 (quoting the '606 patent). The Federal Circuit, conducting a de novo review of the district court's determination of patent-eligibility under '101, performed the two-step Mayo analysis. In step 1, the court agreed with AT&T and the district court that Bascom's claims were directed to an “abstract idea” of “filtering content on the Internet,” because content-filtering “is a longstanding, well-known method of organizing human behavior, similar to concepts previously found to be abstract.” Slip op. at 12. In step 2, the Federal Circuit also agreed with the district court that none of the individual limitations is inventive by itself. But the court disagreed with the district court's analysis of the ordered combination of the'606 patent claim limitations, holding that, on the record before it, the “specific method of filtering Internet content cannot be said, as a matter of law, to have been conventional or generic.” Id. at 16. The Federal Circuit criticized the district court's analysis under Mayo step-two 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.” The Federal Circuit explained that the “inventive concept inquiry requires more than recognizing that each claim element, by itself, was known in the art. ' [A]n inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces.” Id. at 15. The Federal Circuit thus vacated the district court's dismissal order, and remanded.

This premium content is locked for Entertainment Law & Finance subscribers only

  • Stay current on the latest information, rulings, regulations, and trends
  • Includes practical, must-have information on copyrights, royalties, AI, and more
  • Tap into expert guidance from top entertainment lawyers and experts

For enterprise-wide or corporate acess, please contact Customer Service at [email protected] or 877-256-2473

Read These Next
Bankruptcy Sales: Finding a Diamond In the Rough Image

There is no efficient market for the sale of bankruptcy assets. Inefficient markets yield a transactional drag, potentially dampening the ability of debtors and trustees to maximize value for creditors. This article identifies ways in which investors may more easily discover bankruptcy asset sales.

Judge Rules Shaquille O'Neal Will Face Securities Lawsuit for Promotion, Sale of NFTs Image

A federal district court in Miami, FL, has ruled that former National Basketball Association star Shaquille O'Neal will have to face a lawsuit over his promotion of unregistered securities in the form of cryptocurrency tokens and that he was a "seller" of these unregistered securities.

Why So Many Great Lawyers Stink at Business Development and What Law Firms Are Doing About It Image

Why is it that those who are best skilled at advocating for others are ill-equipped at advocating for their own skills and what to do about it?

Blockchain Domains: New Developments for Brand Owners Image

Blockchain domain names offer decentralized alternatives to traditional DNS-based domain names, promising enhanced security, privacy and censorship resistance. However, these benefits come with significant challenges, particularly for brand owners seeking to protect their trademarks in these new digital spaces.

Coverage Issues Stemming from Dry Cleaner Contamination Suits Image

In recent years, there has been a growing number of dry cleaners claiming to be "organic," "green," or "eco-friendly." While that may be true with respect to some, many dry cleaners continue to use a cleaning method involving the use of a solvent called perchloroethylene, commonly known as perc. And, there seems to be an increasing number of lawsuits stemming from environmental problems associated with historic dry cleaning operations utilizing this chemical.