Software Inventions See More Help in Bascom Decision

Since the Supreme Court decided Alice Corp. v. CLS Bank International, patent examiners and the courts have been working to better define patent eligibility. Following closely on the heels of their Enfish, LLC, v. Microsoft Corporation decision, the Federal Circuit provides more guidance on whether software qualified as patentable subject matter with Bascom Global Internet Services, Inc., v. AT&T Mobility LLC. Taken together, Enfish and Bascom indicate the future for software patents is not nearly as bleak as originally predicted when Alice was decided.

Bascom reiterated the two-step test – asking first if the patent is directed to patent- ineligible content and, if so, then asking whether additional elements transform the nature of the claim into a patent-eligible application. The Federal Circuit determined that Bascom was indeed directed to patent-ineligible content. However, on the second step, the court decided that the claims included an inventive concept that can be found in the “non-conventional and non-generic arrangement of known, conventional pieces” transforming the nature of the claims into a patent-eligible application.

The claims in this case were directed to filtering Internet content. The prior art taught two different types of filtering possible at either a local device or on a server. While these types of filtering were known, the system in Bascom enabled the personalized filtering seen on a local device to be performed on a server. By reciting specific details of where the filtering was performed, Bascom was determined to cover a specific, discrete implementation and thus not “preempt all ways of filtering content”. Accordingly, this new arrangement was sufficient for the court to find the claims patent-eligible.

Procedurally, this case was decided on a motion to dismiss during the earliest stages of the case, even before discovery or claim construction. As such, the Federal Circuit construed the facts in favor of Bascom when making their decision to uphold the validity of the patent at this time. In contrast, a recent trend in patent-eligibility decisions has developed where patents are found invalid at the onset of the case. While this trend has been heralded as an efficient means to dispense with dubious claims by ‘patent trolls’ in order to avoid the costs of litigation, it has also been criticized for sidestepping important patent analysis which could help answer the patent-eligibility questions.

The courts are beginning to establish a fuller picture of what qualifies as patent-eligible subject matter in the wake of Alice. Bascom continues with this trend by providing advice with particular relevance for software applications. This helps give inventors and their attorneys the tools they need to draft acceptable claims in order to receive the appropriate examination by the United State Patent and Trademark Office and the proper deference in the courts for the patents that will ultimately issue.