Thursday, August 22, 2013, 9:22 AM

More about patents allegedly relating to abstract ideas: ULTRAMERCIAL v. HULU

In ULTRAMERCIAL v. HULU , LLC (Fed. Cir. 2013), the United States Court of Appeals for the Federal Circuit reversed the dismissal by United States District Court for the Central District of California of Ultramercial’s patent claims for lack of subject matter eligibility under 35 USC §101.  What this means from a practical standpoint for patent practitioners is that there is a new piece of case law that affects patentability of methods, systems and media directed to specially programmed computers or computer programs.  For the reader interested in specific details of the patent in question, there are downloads of US Patent No. 7,346,545 and many analyses of the patent and the court case available on the Internet.  Here, we are interested in the principles of analysis as applied by the court.
The court applied the principle of validity, stating “it will be rare that a patent infringement suit can be dismissed at the pleading stage for lack of patentable subject matter.  This is so because every issued patent is presumed to have been issued properly, absent clear and convincing evidence to the contrary.”  The court then discussed the applicability of claim construction, and looked into the definition of “process”, as invoked in 35 USC §101 (which governs the categories of patentable subject matter).  “As §101 itself expresses, subject matter eligibility is merely a threshold check; patentability of a claim ultimately depends on ‘the conditions and requirements of this title,’ such as novelty, non-obviousness, and adequate disclosure.”  The court went on to discuss the three narrow categories of subject matter that are excluded from patentability, namely the laws of nature, physical phenomena, and abstract ideas.  Homing in on abstract ideas, the court continued citing a number of relevant cases, and allowed that “a claim can embrace an abstract idea and be patentable.” 

Continuing, the court declared “The inquiry here is to determine on which side of the line the claim falls: does the claim cover only an abstract idea, or instead does the claim cover an application of an abstract idea?”  This appears to be the kind of bright line interpretation practitioners can use to guide claim drafting in patent applications.  The court then admonished, “a court cannot go hunting for abstractions by ignoring the concrete, palpable, tangible limitations of the invention the patentee actually claims.  Instead, the relevant inquiry is whether a claim, as a whole, includes meaningful limitations restricting it to an application, rather than merely an abstract idea.”  (Emphasis in the original)
Well, we patent practitioners, if I may be so presumptuous as to speak for the group as a whole, have always tried to claim “an application” rather than just the idea upon which the application is based.  So, the question as always seems to be what are the “meaningful limitations” that restrict the claim to an application?  The court acknowledges, “This analysis is not easy, but potentially wrought with the risk of subjectivity and hindsight evaluations.”  If a claim, the court advises, merely describes an abstract idea or simply adds “apply it” as a limitation, then this does not pass the threshold.  There are the usual contradictory bits of advice, in which a claim that requires a particular machine implementing a process or a particular transformation of matter can be held meaningfully limited, but simply adding conventional steps at a high level of generality to laws of nature, natural phenomena or abstract ideas, even if directed to a particular machine, can be held as not meaningfully limiting a claim.  All of a sudden, the wonderful bright line test of the preceding paragraph doesn’t appear so distinct anymore.
We are reminded by the court not to confuse analysis of the conditions of patentability with inquiries into patent eligibility.  I think the court is saying that subject matter eligibility is a very basic threshold, and that allowing an inquiry into patent eligibility to dominate would render 35 USC §102 (on novelty) and 35 USC §103 (on obviousness) irrelevant or at least less relevant, and thereby deny the body of patents the just value of 35 USC §102 and 35 USC §103 as statutory law.
The court looks for limitations in a claim that make it “less likely that the claims will preempt all practical applications of the idea.”  If the claims are directed to “nothing more than the idea of doing that thing on a computer”, the claims are likely to face larger problems.  The court looks for the computer to play a meaningful role in the performance of the claimed invention.  The court wants to see “whether meaningful limitations in the claim make it clear that the claim is not to the abstract idea itself, but to a non-routine and specific application of that idea.”
From the proceedings, we can derive some guideline tests for claims, as to subject matter eligibility:

Do the limitations “narrow, confine, or otherwise tie down the claim so that, in practical terms, it does not cover the full abstract idea itself”?

Does the computer play a meaningful role in the performance of the claimed invention?

Do limitations in the claim represent significantly more than an underlying abstract idea?

Do the claims preempt the use of an idea in all fields?

In subsequent blogs, we may revisit these questions.  Meanwhile, dear readers, do you have any comments for us?  Let’s get some discussions going.

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