U.S. Appeals Court Finds a Software Patent Valid Even Under the Supreme Court’s “Alice” Test

| Michael L. Fuller

A recent Federal Circuit decision in Bascom Global Internet Services, Inc. v. AT&T Mobility LLC, gives patent owners another illustration of patent subject matter eligibility under section 101.

Applying the two‑part test set forth in Alice Corp. v. CLS Bank Intl., the Federal Circuit found that claims relating to a software system for filtering internet content were directed to an abstract idea under the first step of the Alice test. The Federal Circuit then moved on to the second step to determine whether the claims recited something significantly more than just an abstract idea. The Federal Circuit first looked at individual elements of the claims and determined that none of the individual elements added significantly more to the abstract idea. The Federal Circuit next analyzed the claim elements as a whole and found an inventive concept. In particular, the Federal Circuit noted that the claim elements considered as a whole “represent a software-based invention [] that improves the performance of the computer system itself.” Their rationale was that the claimed invention improved Internet content filtering by “combining the advantages of the then-known filtering tools while avoiding their drawbacks.” Based on this analysis, the Federal Circuit held that the claims were patent eligible under section 101.

As in other Federal Circuit decisions such as DDR and Enfish, the claims at issue were patent eligible because they cumulatively recited a technological solution to overcome existing problems in the prior art.