PublishedJuly 6, 2016

Face Palm Watch: CAFC Says Configuring an Option per User is Patent-Eligible

Distraught man

Bad software patents apparently still have a few protectors on the Federal Circuit: in its recent decision in Bascom Global Internet Services, Inc. v. AT&T Mobility LLC, a Federal Circuit panel said that a patent for configuring a content filtering option per network user is patent eligible. After making a lot of progress in the wake of Alice Corp. v. CLS Bank, this is a big step backwards.

Here’s the main claim at issue (the patent is U.S. Patent No. 5,987,606):

  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 network access requests for said individual controlled access network accounts;

at least one filtering scheme;

a plurality of sets of logical filtering elements; 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 filtering scheme and at least one set of filtering elements, said ISP server further receiving said network access requests from said client computer and executing said associated filtering scheme utilizing said associated set of logical filtering elements.

This is patent lawyer language, of course, but it’s not too complicated. Basically, there are a few ways of filtering out objectionable websites; this system forces all network requests through a single server which filters out the objectionable websites. Each user has a filtering method(s) associated with her account, and the server uses the associated method(s) for the user making the request. That is the claim. There are no new filtering methods, no implementation details, nothing more specific than what I’ve just described.

Under Alice, it seems pretty clear to me that this shouldn’t be patent eligible. The abstract idea is something like “filtering content through a single access point where the method of filtering content is configured for each user.”

Former Federal Circuit Judge Rader used to have a test that went something like, “If it looks technical to me, it’s patent-eligible.” For example, here’s a quote from his opinion in Ultramercial v. Hulu:

Viewing the subject matter as a whole, the invention involves an extensive computer interface. Unlike Morse, the claims are not made without regard to a particular process. Likewise, it does not say “sell advertising using a computer,” and so there is no risk of preempting all forms of advertising, let alone advertising on the Internet. Further, the record at this stage shows no evidence that the recited steps are all token pre- or post-solution steps. Finally, the claim appears far from over generalized, with eleven separate and specific steps with many limitations and sub-steps in each category.

Ultramercial was, of course, vacated by the Supreme Court. It seems like the Bascom opinion, authored by Judge Chen is moving back in that direction:

The inventive concept described and claimed in the ’606 patent is the installation of a filtering tool at a specific 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 Internet content with a specific individual account… 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…

… 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 versatile enough that it could be adapted to many different 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 “improve[] an existing technological process.”

To be clear, there’s no “technical improvement” in the patent, just the idea of putting a selectable set of filters on a central server, through which all requests must go. (The entire description of the “invention” is done in less than two pages; there’s not a word about how one might actually implement anything.) All of the technical stuff is not only known, it’s fairly old, as the court admits.

A technical improvement requires something, well, technical. All that’s done here is to say, well, people might like to be able to choose which content filtering method they use, so we’ll let them each pick their own. The patent doesn’t describe any new technical contribution needed in order to make this idea work. In fact, it ignores problems that might arise in scaling the solution to a large number of users.

Essentially, the court has bought some technical-sounding gobbledygook from the patent owner, and, as a result, we end up with yet another software patent that should never have issued.

The Supreme Court in Alice made it pretty clear that there needs be some real technical improvement for software to be patent-eligible. But this requires the Federal Circuit to be more discerning. Any patent lawyer can make something sound technical and complicated; the court has to cut through all that, and it didn’t in this case.

Let’s hope this case is an aberration. Otherwise, we may need the Supreme Court to step in yet again.

Matt Levy

Previously, Matt was patent counsel at the Computer & Communications Industry Association

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