AN AUSTIN PATENT ATTORNEY’S REVIEW OF: ULTRAMERCIAL, INC. v. HULU, LLC
In this case, the Court of Appeals reviewed and reversed the District Court’s holding that subject matter of ‘7346,545 patent was not a process within the language of 35 USC 101.
The ‘545 patent claims a method of distributing copyrighted materials over the internet in return for a consumer viewing an advertisement. The independent claim of the ‘545 patent included 11 steps where a user views the advertisement and is presented with the copyrighted material from a source, and in return for the user viewing the advertisement the source receives payments from the sponsor associated with the advertisement. The court of appeals reviewed and reversed the District Court’s determination that the ‘545 patent did not include eligible subject matter under 35 USC 101.
The Court of Appeals reasons that 35 USC 101 is merely a threshold check, that may be used as a coarse eligibility filter, and that the real substantive patentability requirements include novelty, non-obviousness, and adequate disclosure, and the high level of proof applies to eligibility as it does to the separate patentability determinations.
The Court of Appeals stated that the machine-or-transformation logic serves as a tool to determine industrial process but is not the sole test for deciding if a claim is eligible for a patent. The Court of Appeals further stated that a claim can embrace an abstract ide and be patentable, but a claim is not patent eligible if claims are directed to an abstract idea (and not the application of the abstract idea). The Court of Appeals further stated that any claim can be simplified or paraphrased to remove all concrete limitations until it is characterized as an abstract idea, instead the relevant inquiry is whether a claim as a whole includes meaningful limitations restricting it to an application rather to merely an abstract idea.
The Court of Appeals reasoned that a broad claim that covers all practical applications of an abstract idea, is not meaningfully limited, but it is not the breadth or narrowness of the abstract idea that is relevant, but whether the claim covers every practical application of the abstract idea. As the Court held in Bilski, a claim is meaningfully limited if it requires a particular machine implementing a process or a particular transformation of matter. Further, a claim will be limited meaningfully, when in addition to the abstract idea, the claim recites added limitations which are essential to the invention, such as they do more than recite pre or post solution activity.
Accordingly, the Court of Appeals held that the claims of the ‘545 patent included a patentable application rather than an unpatentable abstract idea, where the ‘545 patent discloses a practical application of this idea.
PATENT ATTORNEY TAKE-A-WAYS:
- This case for patent attorneys when dealing with 35 USC 101 rejections with examiners. It appears from this case if you are tying your software patent to a specific apparatus as well as includes meaningful limitations, then you are above the 35 USC 101 threshold. Furthermore, the court hinted that this case would utilize an “extensive computer interface” when looking at the figures. Therefore, by including good figures showing a computer network, Patent Attorneys may be able to easily overcome 35 USC 101 rejections.
- Software is Patentable! A question I get from inventors and start-ups a lot is “software patentable.” As highlighted by this case, if a computer process is required to be carried out by a computer rather than merely by a human, then the subject matter of the claim may be patentable. As recited in this case “Interchangeable software or hardware enhancements deserve patent protection. Far from abstract, advances in computer technology – both hardware and software – drive innovation in every area of scientific and technical endeavor.”
- Patent attorneys should include some “hardware elements” in their method claims. This should be enough to overcome the 35 USC 101 threshold.