Thursday, 15 August 2013 18:41

Revisiting 101 Patent Eligibility in Ultramercial v. Hulu

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As written earlier in our blog, the CLS Bank decision left many guessing as to what might be considered patent eligible subject matter under § 101 of the U.S. patent laws.  In a more recent and less known opinion, Ultramercial, Inc. v. Hulu, LLC (Fed. Cir. 2013), a three judge panel attempted to provide some additional guidance in light of the CLS Bank indecision.  Of note is that the panel included the authors of the two main opposing opinions in CLS Bank, Chief Judge Rader and Judge Lourie.  However, rather than authoring different holdings, the panel agreed that the claims at issue in this case met the requirements of § 101.

The action involved U.S. Patent No. 7,346,545, a patent directed to a method of distributing media content online to viewers in exchange for viewing advertisements, where the advertiser pays the distributor for the advertisements.  On a 12(b)(6) motion, the District Court held that the patent in suit did not claim patent eligible subject matter under § 101.  On appeal, the Federal Circuit reversed and remanded, but the decision was vacated by the Supreme Court.  Back in the Federal Circuit, Chief Judge Rader authored the majority opinion, joined by Judge O'Malley, again reversing the District Court.  Judge Lourie authored a concurring opinion. 

Parallel to his decision in CLS Bank, Chief Judge Rader again emphasizedthat Congress intended § 101 to be read expansively.  It was the courts, and not Congress, that introduced exceptions to patentable subject matter.  Namely, the exceptions of abstract ideas, laws of nature, and natural phenomena were introduced to "prevent the monopolization of the basic tools of scientific and technological work."  Accordingly, § 101 should play a limited role in patentability, and is "merely a threshold check . . . no more than a 'coarse eligibility filter'."   After all, the purpose of the Patent Act is to encourage innovation, and the use of broadly inclusive categories of statutory subject matter ensures that “ingenuity . . . receive[s] a liberal encouragement.”

Accordingly, under Chief Judge Rader's analysis, the patentability of a claim should not fall upon a § 101 analysis, but rather ultimately be decided by "the conditions and requirements of [Title 35] . . . such as novelty, non-obviousness, and adequate disclosure."    Following his expansive interpretation of § 101, Chief Judge Rader addressed the patentability of abstract ideas with respect to software and business method claims.  It is his belief that in rejecting the machine-or-transformation test as the sole test for § 101 eligibility in Bilski, the Supreme Court was attempting to allow patent laws to accomodate for emerging technologies in the information age.  Therefore, "a process need not use a computer, or some machine, in order to avoid abstractness."   Rather, a claim that recites an abstract idea can be valid so long as the claim is directed to an application of the idea, and the claim should be considered as a whole to determine whether the claim includes meaningful limitations restricting it to such an application.

In assessing what constitutes a "meaningful limitation," Chief Judge Rader provided several examples of when a claim is not meaningfuly limited, drawing support from Bilski, Prometheus, and Diehr:

  1. A claim is not meaningfully limited if it merely describes an abstract idea or simply adds "apply it."
  2. If a claim covers all practical applications of an abstract idea, it is not meaningfully limited.
  3. When the steps of a claim must be taken in order to apply the abstract idea in question,it is not meaningfully limited.
  4. If a claim does not wholly pre-empt an abstract idea, it still will not be limited meaningfully if it contains only insignificant or token pre- or post-solution activity--such as identifying a relevant audience, a category of use, field of use, or technological environment.
  5. A claim is not meaningfully limited if its purported limitations provide no real direction, cover all possible ways to achieve the provided result, or are overly-generailzed.

Similarly, Chief Judge Rader also provided examples of meaningful limitations which likely remove claims from the scope of the Court's judicially created § 101 exceptions:

  1. A claim is meaningfully limited if it requires a particular machie implementing a process or a particular transformation of matter.
  2. A claim will be limited meaningfully when, in addition to the abstract idea, the claim recites added limitations which are essential to the invention, where the added limitations do more than recite pre- or post-solution activity, and are central to the solution itself.  In such circumstances, the abstract idea is not wholly preempted; it is only preempted when practiced in conjunction with the other necessary elements of the claimd invention.

The parties agreed that the claimed idea of exchanging advertising as a form of currency is abstract, and focused solely  on whether the claims include meaningful limitations to overcome the § 101 exception directed to abstract ideas.    Chief Judge Rader, based on his analysis above, answered this question in the affirmative.  He observed that "several steps plainly require that the method be performed through computers, on the internet, and in a cyber-market environment."    Further, because the "invention involves an extensive computer interface. . .  are not made without regard to a particular process . . . there is no risk of preempting all forms of advertising, let alone advertising on the Internet."  Importantly, Chief Judge Rader also argued that the claims required in this case, including the controlle interaction witha  consumer over an Internet website, was "far removed from purely mental steps."

In a concurring opinion, Judge Lourie wrote to "concisely and faithfully" follow the Supreme Court's most recent guidance regarding patent eligibility in Prometheus, as well as the plurality opinion of the five Federal Circuit judges in CLS Bank v. Alice.   Judge Lourie agreed that the additional claim limitations in this case "narrow, confine, or otherwise tie down the claim so that, in practical terms, it does not cover the full abstract idea itself." 

However, Judge Lourie disagreed with Chief Judge Rader's emphasis on the complexity of the computer program or the implementation of the claimed method, because a specific implementation was not claimed.  Similarly, the number of claim limitations is also not an indication of patent-eligbility.  Judge Lourie simply concluded that in his view, "the added limitations in these claims represent significantly more than the underlying abstract idea of using advertising as an exchange or currency and, as a consequence, do not preempt the use of that idea in all fields."  Unlike his earlier CLS Bank opinion, Judge Lourie did not reintroduce the notion of an "inventive concept," which is a "contribution" of "human ingenuity" into a § 101 analysis.

The case still leaves much to be desired as to what analytical approach  to take when evaluating claims involving the application of abstract ideas.  Chief Judge Rader's approach is elucidative, but is an otherwise limited holding given the procedural posture of the case -- on review of a 12(b)(6) motion -- in which the Court adopted a construction "most favorable to the patentee."  On the other hand, Judge Lourie's approach is conclusory at best, and fails to apply his earlier "inventive concept" approach from CLS Bank.  Nonetheless, Ultramercial sheds some light on how a claim that applies an abstract idea can include both sufficient "meaning limitations" and "inventive concept" to satisfy two judge who so  strongly opposed one another, and may serve as an important data point in the uncertain roadmap of  § 101 determinations.

Read 3245 times Last modified on Friday, 06 December 2013 21:03
Tony Guo

As a Registered Patent Attorney, Mr. Guo concentrates his practice in Patent Prosecution and Intellectual Property Litigation.  Mr. Guo has considerable hardware and software development experience, having worked in both development and IT roles for organizations such as Silicon Graphics International, Société Générale, and the University of Miami.  Mr. Guo earned his bachelor's degree in Computer Engineering from Purdue University, and his law degree, with honors, from the University of Miami School of Law.