Federal Circuit Elaborates on § 101 Analysis Under Step Two of the Alice Test

In BASCOM Global Internet Services, Inc. v. AT&T Mobility LLC, No. 15-1763 (Fed. Cir. June 27, 2016), the Federal Circuit issued another opinion on post-Alice subject matter eligibility for computer-related inventions. In this case, the Court found that the claims at issue, which are directed to “filtering Internet content,” are patent-eligible under Alice.

Considering the first step of the Alice test—whether the claims are directed to an abstract idea—the Court noted that this case presents a “close call[] about how to characterize what the claims are directed to,” noting that, unlike the claims at issue in the Court’s recent Enfish decision, “the [BASCOM] claims and their specific limitations do not readily lend themselves to a step-one finding that they are directed to a nonabstract idea.” Under step two of the Alice test—the inventive concept inquiry— the Court found that the claims contain an “inventive concept” in the “ordered combination of claim limitations.” The Court noted that “an inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces.”

Judge Newman concurred, but expressed concerns about “cumbersome” litigation procedures for separate determination of patent eligibility and patentability, urging a more flexible approach.