Bascom Global Internet Servs., Inc. v. AT&T Mobility LLC

• Citation: 827 F.3d 1341,119 U.S.P.Q.2d 1236
• Decision Date: 27 June 2016
• Docket Number: 2015–1763
• Parties: Bascom Global Internet Services, Inc., Plaintiff–Appellant, v. AT&T Mobility LLC, AT&T Corp., Defendants–Appellees.
• Court: United States Courts of Appeals. United States Court of Appeals for the Federal Circuit

827 F.3d 1341

119 U.S.P.Q.2d 1236

Bascom Global Internet Services, Inc., Plaintiff–Appellant

v.AT&T Mobility LLC, AT&T Corp., Defendants–Appellees.

2015–1763

United States Court of Appeals, Federal Circuit.

Decided: June 27, 2016

Arun Subramanian, Susman Godfrey LLP, New York, NY, argued for plaintiff-appellant. Also represented by Daniel J. Shih, Jordan Connors, Seattle, WA.

Bryant C. Boren, Jr., Baker Botts LLP, Palo Alto, CA, argued for defendants-appellees. Also represented by Ryan Bangert, Johnson Kuriakose Kuncheria, Kurt M. Pankratz, Dallas, TX; Michael Hawes, Houston, TX.

Before Newman, O'Malley, and Chen, Circuit Judges.

Opinion concurring in the result filed by Circuit Judge Newman

.

Chen

, Circuit Judge.

BASCOM Global Internet Services, Inc. appeals from the grant of a motion to dismiss under Rule 12(b)(6) of the Federal Rules of Civil Procedure

(FRCP), in which the United States District Court for the Northern District of Texas held that BASCOM failed to state a claim upon which relief can be granted because the claims of U.S. Patent No. 5,987,606 are invalid as a matter of law under 35 U.S.C. § 101. BASCOM has 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 test. We find nothing in the intrinsic record to refute that allegation as a matter of law. We therefore vacate the district court's order dismissing BASCOM's complaint, and remand for further proceedings.

Background

The '606 patent

was filed March 19, 1997. Back in 1997, the Internet was known to contain information that consumers, students, and businesses wanted to access. '606 patent, 1:16–17. As the patent describes in the “Background of the Present Invention” section, web browsers “such as the Netscape Navigator™ or the Microsoft Explorer™” allowed users to access websites in the form of HTML files. Id. at 1:18–24; see also id. at 1:23–25 (“Other software utilities for accessing Internet content include News Groups, FTPs, IRC chat rooms and email.”). Some websites, however, contained information deemed unsuitable for some users. Corporations had the need to prevent their employees from accessing websites with certain types of information, such as “entertainment oriented sites,” while allowing them to continue to access “technical or business sites,” and parents had the need to prevent their family from accessing websites containing “sexually explicit or other objectionable information.” Id. at 1:30–40.

The computer industry responded to this need by developing a software tool that allowed control over the type of information received over the Internet. The software tool inspected a user's request to access a website and applied one or more filtering mechanisms: “exclusive filtering (‘black-listing’) which prevents access to all sites on a predetermined list of Internet sites; inclusive filtering (‘white-listing’) which allows access only to a predetermined list of Internet sites; and word-screening or phrase-screening which prevents access to web site ‘pages' which contain any word or phrase on a predetermined list.” Id. at 1:41–50.

According to the '606 patent

, filtering software was first placed on local computers, such that each local computer had its own tool for filtering websites (or other Internet content) requested by the operator of the computer. Id. at 1:58–63, Figure 8. Although the filtering software worked for its intended purpose, there were logistical problems with locating a tool for filtering Internet content on each local computer: (1) “it is subject to be modified or thwarted by a computer literate end-user, such as a teenager or corporate employee”; (2) “it is difficult and time consuming to install on every end-user's client machine”; (3) “[it] is dependent upon individual end-user hardware and operating systems and requires modified software for different end-user platforms”; and (4) “the client database [ ] must be updated frequently to track changes in the content of various Internet sites” which “requires frequent downloads from the Internet or disk updates.” Id. at 2:1–12.

To overcome some of the disadvantages of installing filtering software on each local computer, another prior art system relocated the filter to a local server. Id. at 2:13–23, Figure 9. For example, a corporation with one connection to the Internet might have placed a server between the computers of its employees and the Internet connection. In this configuration, many individual computers with different hardware and operating systems were connected to one local server over a local area network. When employees at their individual computers requested websites from the Internet, the local server would filter all requests for Internet content. Id. “[A] computer literate end-user” therefore could no longer easily “modify or thwart” the filtering tool to gain access to blocked websites. Id. at 2:25–30. However, the one-size-fits-all filter on the local server was not ideal because “a single set of filtering criteria is often not appropriate for all of the end-users.” Id. at 2:20–23. This solution for filtering Internet content also “require[d] time-consuming local service to initiate and maintain” and “software implementing the filtering functions [was] typically tied to a single local area network or a local server platform.” Id. at 2:23–35.

Finally, some Internet Service Providers (ISPs), such as “America Online,” installed a filter on their remote servers, which allowed the ISP to prevent its subscribers from accessing certain websites. Id. at 2:36–39. However, this solution continued to use a single set of filtering criteria for all requests for websites from all of its subscribers. Id. at 2:39–49.

The '606 patent

describes its invention as combining the advantages of the then-known filtering tools while avoiding their drawbacks. The claimed filtering system avoids being “modified or thwarted by a computer literate end-user,” and avoids being installed on and dependent on “individual end-user hardware and operating systems” or “tied to a single local area network or a local server platform” by installing the filter at the ISP server. Id. at 2:1–12, 2:23–35, 2:55–65. And, unlike the filtering tools that existed on local servers and remote ISP servers at the time, the claimed filtering tool retains the advantage of a filtering tool that is located on each local computer; individuals are able to customize how requests for Internet content from their own computers are filtered instead of having a universal set of filtering rules applied to everyone's requests. Id. at 2:52–65 (“[T]he present invention ... provid[es] an Internet access system which: ... allows users to select filtering schemes, such as inclusive or exclusive filtering, and filtering elements, such as ISP provided inclusive-lists or exclusive-lists, or their own customized inclusive-lists or exclusive-lists....”).

The claimed invention is able to provide individually customizable filtering at the remote ISP server by taking advantage of the technical capability of certain communication networks. In these networks, the ISP is able to associate an individual user with a specific request to access a website (or other Internet content), and can distinguish that 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. Id. at 4:35–38. After a user has logged in, the ISP server can associate the user with a request to access a specific website. Id. at 5:60–62 (“In the TCP/IP protocol, each Internet access request or ‘packet’ includes the [website] from which content is requested.”). Because the filtering tool on the ISP server contains each user's customized filtering mechanism, the filtering tool working in combination with the ISP server can apply a specific user's filtering mechanism to the websites requested by that user. Id. at 4:35–50. To summarize, 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 that 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. The '606 patent

describes its filtering system as a novel advance over prior art computer filters, in that no one had previously provided customized filters at a remote server.

The claims of the '606 patent

generally recite a system for filtering Internet content. The claimed filtering system is located on a remote ISP server that associates each network account with (1) one or more filtering schemes and (2) at least one set of filtering elements from a plurality of sets of filtering elements, thereby allowing individual network accounts to customize the filtering of Internet traffic associated with the account. For example, one filtering scheme could be “a word-screening type filtering scheme” and one set of filtering elements (from a plurality of sets) could be a “master list[ ] of disallowed words or phrases together with [an] individual [list of] words, phrases or rules.” Id. at 4:30–35. According to BASCOM, the '606 patent contains two groups of claims: a first group that is limited to individual-customizable filtering on a remote ISP server, and a second group that is further limited to a hybrid filtering scheme implemented on the ISP server comprised of a master-inclusive list, an individual-customizable set of exclusive lists, and an individual-customizable set of inclusive lists. For the individually customizable filtering claims, BASCOM points to claim 1 as instructive.

1. A

...