For inventor Thomas Bascom, the handwriting was on the wall. In big, screaming letters.
Between a difficult reexamination before the U.S. Patent and Trademark Office and a Supreme Court decision that raised the bar on software patents, Bascom's suit against LinkedIn Inc. and Facebook Inc. had little chance of surviving a challenge under Section 101 of the Patent Act. U.S. District Judge Susan Illston ruled Monday that Bascom's computerized method for organizing relationships among documents is invalid because it's drawn to ineligible subject matter.
It was the latest software patent to bite the dust in the wake of Alice v. CLS Bank, the June U.S. Supreme Court decision that tightened eligibility standards under Section 101.
"Bascom has also not shown that the patents require anything beyond generic and conventional computer structures and unspecified software programming," Illston wrote in Bascom Research v. LinkedIn, 12-6293. Cooley and Keker & Van Nest bagged the win for Facebook and LinkedIn, respectively.
Bascom invented a system called LinkSpace that allows a computer user to "establish and/or search relationships between document objects located on the device, network or the Internet." The idea is to organize information for more efficient searching.
Bascom Research sued LinkedIn, Facebook, Novell Inc., Salesforce.com Inc. and two other tech companies in 2012 in Virginia. All but LinkedIn and Facebook were dismissed after the case was transferred to Northern California last year.
Bascom's patents almost were invalidated during reexamination at the PTO, according to Illston's order. They were approved only after Bascom agreed to add the words "computer-implemented" to the claims. But the U.S. Supreme Court in Alice unwound that solution, holding explicitly that "the mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention."
Bascom's attorneys at Russ August & Kabat argued that the patents aren't abstract because they describe "a specific implementation of publishing and linking content on computer network." Besides, they argued, Illston shouldn't rule before holding a hearing on claim construction.
But Illston decided to grant LinkedIn and Facebook's motion for summary judgment now. "Adopting Bascom's proposed constructions does not alter the court's conclusion that the patents-in-suit claim ineligible subject matter," she wrote.
Cooley partner Heidi Keefe argued the motion for Facebook and Keker partner David Silbert argued for LinkedIn. Cooley partners Michael Rhodes and Mark Weinstein and special counsel Lowell Mead also contributed, as did Keker partner Robert Van Nest and of counsel Dan Jackson.
Russ August partners Marc Fenster and Brian Ledahl argued the motion for Bascom Research.