Monday, June 27, 2016

Bascom beats AT&T on 101 issue at CAFC

Bascom won a vacating of an order from ND Texas.

However, we disagree with the district court’s analy-
sis of the ordered combination of limitations. In light of
Mayo and Alice, it is of course now standard for a §101
inquiry to consider whether various claim elements
simply recite “well-understood, routine, conventional
activit[ies].” Alice, 134 S. Ct. at 2359. The district court’s
analysis in this case, however, looks similar to an obvi-
ousness analysis under 35 U.S.C. § 103, except la
cking an explanation of a reason to combine the limitations as
claimed. The inventive concept inquiry requires more
than recognizing that each claim element, by itself, was
known in the art. As is the case here, an inventive con-
cept can be found in the non-
conventional and non-generic
arrangement of known, conventional pieces.
The inventive concept described and claimed in the ’606 patent
is the installation of a filtering tool at a specif-
ic location, remote from the end-users, with customizable
filtering features specific to each end user.


While the claims of the ’606 patent
are directed to the abstract idea of filtering content,
BASCOM has adequate-
ly alleged that the claims pass step two of
Alice’s two-part framework.

Judge Newman wrote separately:

As this case
illustrates, these cumbersome
procedures for sepa-
rate determinations of patent eligibility
and patentability have added
to the cost and uncertainty of
commerce, with no balancing benefit.



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