In This Issue
· The
Federal Circuit Further Clarifies Patentable Subject Matter Under 35 U.S.C. §
101
· The
Federal Circuit Blesses the USPTO’s Continuation Filing Rule
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The
Federal Circuit Further Clarifies Patentable Subject Matter Under 35 U.S.C. §
101
The Court of Appeals for the Federal
Circuit (“CAFC”) reversed the U.S. District Court for the Northern District
of Texas grant of Defendant AT&T’s Motion to Dismiss under Federal Rule
of Civil Procedure 12(b)(6) for failure to state a claim in BASCOM Glob. Internet Servs. v. AT&T Mobility, LLC, and further clarified the
standard for patentable subject matter under 35 U.S.C. § 101.
By way of background, Plaintiff
BASCOM Global Internet Services, Inc. appealed the Texas District Court’s
grant of a motion to dismiss under Rule 12(b)(6), in
which the Texas District Court held that BASCOM failed to state a claim upon
which relief could be granted because the claims of the U.S. Patent No.
5,987,606 are invalid as a matter of law under 35 U.S.C. §101. BASCOM 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 analysis. The CAFC sided with
Plaintiff finding nothing in the record to support invalidity under §101.
The ‘606 patent is directed to a
system that relates to software for blocking undesirable websites from access
in both the workplace as well as in the home. While prior art software performed such functions, the software had to
be installed on each machine. Another
prior art system overcame some of the disadvantages of installing filtering
software on each local computer by relocating the filter to a local
server. The disadvantages of this
prior art solution were that “a single set of filtering criteria is often not
appropriate for all of the end users,” and filtering Internet content also
required time consuming local service to initiate and maintain software
implementing the filtering functions specifically used to a single local area
network or a local platform.
The invention claimed in the ‘606
patent is able to provide individually customizable filtering at the remote
ISP server by taking advantage of the technical capability of certain
communication networks. That is, the
ISP is able to associate an individual user with a specific request to access
a website or other Internet content and can distinguish the user’s requests
from other users’ requests. One way
that the ISP is able to make this association, as described in the ‘606
patent, is by requiring each user to first complete a log-in process with the
ISP server. After a user has logged
in, the ISP server can then associate the user with a request to access a
specific website. The ISP server
receives a request to access a website, associates the request with a
particular user, and identifies the requested website. The filtering tool then applies the
filtering mechanism associated with the particular user to the requested
website to determine whether the user associated with the 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.
BASCOM sued AT&T for patent
infringement, and then added AT&T Mobility LLC and AT&T Corp. as defendants
and then dismissed AT&T Inc. from the case. AT&T moved to dismiss BASCOM’s
complaint under Rule 12(b)(6) on the basis that each
claim of the ‘606 patent was invalid under §101. 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
routine 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 computer technology, similar to the claims at
issue in DDR Holdings LLC v.
Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014). BASCOM asserted that its claims were
different because filtering Internet content was not longstanding or
fundamental at the time of the invention and is not independent of the
Internet.
The Texas District Court agreed with
AT&T finding the ‘606 patent 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 through
other media, like books, magazines, television, or movies. The District Court (i) first determined
that no individual limitation was inventive because each limitation in
isolation was a “well-known, generic computer component” or a standard
filtering mechanism, and then (ii) 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.
The CAFC, in reversing the Texas
District Court, observed that this case presents a close call about how to
characterize the subject matter recited in the claims. According to the CAFC, the prior art
filters were either susceptible to hacking and thus
dependent on local hardware and software, or confined to an inflexible
one-size-fits-all scheme. The CAFC
then observed that 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. The CAFC also observed that 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. That is, 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 computer
components. Such claims would not
contain an inventive concept. Nor did
the claims preempt all the ways of filtering content on the Internet; rather,
they recite a specific, discrete implementation of the abstract idea of
filtering content.
The CAFC lastly noted that, while
the claims of the ‘606 patent are directed to the abstract idea of filtering
content, BASCOM adequately alleged facts establishing that the claims pass
step two of Alice’s two-part framework. That is, 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. Based upon this rationale, the CAFC vacated
the Texas District Court’s grant of AT&T’s Rule 12(b)(6) motion to
dismiss, and remanded the case for further proceedings consistent with the
opinion.
The Federal Circuit Blesses the
USPTO’s Continuation Filing Rule
In Immersion Corp. v. HTC Corp., the CAFC
approved the USPTO’s continuation filing rule. Specifically, the CAFC addressed whether
the requirement that a continuation application be “filed before the
patenting” of the earlier application, to avoid creating prior art to the
later filed continuation application, is met if the continuation is filed on
the same day as the patenting of the earlier application, and answered that a
continuation is considered to be “filed before the patenting” of the earlier
application when both legal acts, filing and patenting, occur on the same
day.
By way of
background, Immersion Corporation filed a patent application, on January 19,
2000, disclosing a mechanism for providing haptic feedback to users of
electronic devices, which issued as U.S. Patent No. 6,429,846 (“the ‘846
patent) on August 6, 2002. Immersion,
meanwhile, also filed PCT/US01/01486, which published as WO 01/54109 (“WO
109”) on July 26, 2001, based upon substantially the same disclosure. WO ‘109 is therefore invalidating
disclosure under 35 U.S.C. 102(b) to any claims having an effective filing
date after July 26, 2002.
Beginning in
August 2002 (after the July 26, 2002 critical date), Immersion filed a series
of continuation applications that shared the written description of the ’846
patent, and for which Immersion sought an effective filing date, based upon
35 U.S.C. § 120, of January 19, 2000, the filing date of the ’846
patent. One link in the chain of
applications was contested. Specifically, Immersion filed a continuation, which issued as U.S.
Patent No. 7,148,875 (“the ‘875 patent”), on August 6, 2002, the same day
that the ’846 patent issued. The
present dispute is whether the ’875 patent was “filed before the patenting”
of the ’846 patent, and hence is entitled to the filing date of the ’846
patent.
While there are
other issued patents in the family, the 35 U.S.C. § 120 claims for priority
in those patents are not challenged. The only patents that are at issue are three patents, i.e., U.S.
Patent Nos. 7,982,720, 8,031,181, and 8,059,105, which all share a written
description with WO ’109, and include a § 120 claim for priority to the ‘846
patent.
In the District
Court action filed in early 2012, Immersion sued HTC for infringing the ’720,
’181, and ’105 patents (as well as other patents no longer at-issue), and
sought summary judgment that the asserted patent claims were invalid under 35
U.S.C. § 102(b) because the applications did not satisfy the “filed before
the patenting” requirement of § 120 and WO ’109 disclosed the claimed subject
matter. The District Court held that
the ’875 patent application was not “filed before the patenting” of the ’846
patent, because its application was filed on the same day as the issuance of
the patent.
While the CAFC
observed that the “filed before the patenting” requirement could be
interpreted to mean the day before or the same day, the CAFC stated that the
history of this Patent Act provision “is so weighty as to be determinative”
to merely require that the continuation be filed the same day, which the CAFC
noted was in line with the settled expectations of patentees. The CAFC saw no reason to overturn the long
standing view of the statute even if it wasn't the "most natural"
one and moreover the proffered interpretation was plausible. The CAFC also noted that there is no
legislative history to support HTC's preferred interpretation, and Congress
has altered the Patent Act multiple times since 1960, knowing the USPTO's
rule, without disturbing § 120.
The PTO
estimated that more than 13,500 patents issued since 2000 would have been
susceptible to attack if the District Court holding was upheld, according to
the U.S. government's brief. The Intellectual Property Owners Association
filed an amicus brief citing Ocean Tomo UT's estimate of 12,300 patents at
risk. |
