…..Or Judge Newman proposes a blended approach when “Abstract Idea” or “Inventive Concept” is at issue. In Bascom v. AT&T, Appeal no. 2015-1763 (June 27, 2016, Fed. Cir.), panel of Judges Newman, O’Malley and Chen reversed the district court’s finding that Bascom’s U.S. Pat. No. 5,987,606 failed step two of the Mayo/Alice test, since was simply a combination of conventional steps carried out using generic computers. (A copy of the decision can be found at the end of this post.) The panel reversed, calling this a close case but found an inventive concept in claims to an individualized internet content filtering system patent eligible since “an inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces.”
While AT&T argued – as all defendants should in such cases – that the claims were directed to a “well-known ‘method of organizing human activity'” and analogized the “idea of filtering content to a parent or librarian forbidding children from reading certain books” and “that performing the filtering on the Internet does not make the idea nonabstract.” Bascom argued that the claims “address a problem arising in the realm of computer networks, and provide a solution entirely rooted in computer technology” that is “something narrower” than simply filtering content. It is troubling that Bascom must effectively create estoppel before it ever gets to do a full Philips analysis of claim scope at trial.
One notable feature of this relatively short opinion is that both parties argued that the claims were closer to earlier decisions that either affirmed patent-eligibility or denied it. In other words, precedent is accumulating rapidly in this area, and I counted at least eight earlier opinions cited by the parties, not counting Alice.
Ultimately, while the panel found that the central concept of the claims was an abstract idea, it found that the additional steps required to implement met the “inventive concept test” and remanded. However Judge Newman wrote a separate concurrence arguing, essentially, that the Mayo/Alice test has resulted in the need for two trials – one on eligibility and a second on patentability. Noting that 112 and 103 arguments often affect the outcome of the “abstract idea”/”inventive concept” debate, she would combine them, since “I have come upon no guide to when a claims crosses the boundary between unacceptable abstractness and acceptable specificity….This conundrum is resolved on application of the criteria of patentability.”
In this case, she noted that AT&T was arguing the features of the claims were “well-known in the prior art” and that the district court had found motivation to combine them. Bascom argued that it did not have a “full opportunity to present evidence concerning patentability” (that could go all the way to secondary considerations, written description and enablement issues and beyond). Judge Newman closed with an apt summary of her position:
“If the claims are unpatentable [after all the evidence is in], any issue of abstractness, however defined, is mooted. And if the subject matter is patentable, it is not an abstract idea. We should clarify that such expediency is an available response to challenges on the ground of ‘abstract idea.’”
This would work for nature-derived products and natural laws as well. Try it – you might like it.