Background
BASCOM Global Internet Services held U.S. Patent No. 5,987,606, covering a system and method for filtering Internet content. The patented system installed content-filtering software on a remote ISP server — rather than locally on each user’s computer or on a network gateway — and allowed individual users to customize their filtering preferences for their specific accounts. This architecture addressed a practical limitation of local filtering (easy to bypass) and uniform network-level filtering (one-size-fits-all, no customization) by moving filtering to the ISP level with per-account customization.
BASCOM sued AT&T Mobility and AT&T Corp. for infringement. The Northern District of Texas granted AT&T’s motion to dismiss at the pleading stage, holding that filtering Internet content was an abstract idea and that the claims added no inventive concept beyond conventional computer implementation. BASCOM appealed, arguing that the specific, non-conventional architectural arrangement of its filtering system was the inventive concept.
The Court’s Holding
Judge Chen, writing for the panel, vacated the dismissal and remanded. The court agreed with the district court at Alice step one: content filtering is an abstract idea — a longstanding, well-known organizational practice that predates the Internet. But the court reversed at step two, finding that BASCOM had plausibly alleged an inventive concept sufficient to survive a motion to dismiss.
The key innovation, the court held, was the particular arrangement of filtering at the remote ISP server — rather than at the user’s device or at a uniform network gateway — combined with the ability to customize filtering per individual account. This specific location and customization architecture was non-conventional and non-generic; no prior art had combined these elements in this way. The court held that an inventive concept can be found in the “non-conventional and non-generic arrangement of known, conventional pieces” — even when each individual piece is itself conventional. The ordered combination can be what makes the claim patent-eligible.
Key Takeaways
- BASCOM established that Alice step two can be satisfied by a non-conventional arrangement of individually conventional elements — the combination’s novelty and non-obviousness can supply the inventive concept.
- The decision reinforced that § 101 dismissals at the pleading stage are often premature when the complaint plausibly alleges a non-conventional technical arrangement — Alice analysis may require factual development.
- Alongside Enfish and DDR Holdings, BASCOM helped define a set of viable theories for defending software patents against § 101 challenges: (1) improvement to computer technology (Enfish), (2) Internet-specific solution (DDR), (3) non-conventional arrangement of known elements (BASCOM).
- The decision shifted some § 101 battles from purely legal to mixed legal-factual questions, making early dismissals harder when the patent holder articulates a plausible inventive concept based on claim architecture.
Why It Matters
BASCOM is one of a handful of 2016 decisions that began to build a more nuanced § 101 framework after the broad sweeps of Alice and its early progeny. Together with Enfish (May 2016) and McRO v. Bandai Namco (September 2016), BASCOM signaled that the Federal Circuit was developing more granular tools for identifying patent-eligible software claims rather than simply applying a blanket rule of invalidity.
For software patent practitioners, BASCOM’s “non-conventional arrangement” theory became an important tool in both prosecution and litigation. If your client’s invention combines known elements in a specific, unconventional architecture that solves a technical problem, that combination may supply the inventive concept needed for § 101 eligibility — even if no single element is individually novel.