By Bruce Sunstein. A member of our Patent Practice Group
On November 14, the Federal Circuit Court of Appeals rendered an unsettling decision in Ultramercial Inc. v. Hulu, Inc. The patent claims were directed to a method of distributing copyrighted media products over the Internet free to consumers. The consumer would be presented with an advertisement as well as the desired content and the advertiser would pay for the ad placement, thereby underwriting the consumer’s enjoyment of the copyrighted content.
The opinion was written by Judge Lourie, who is something of an expert on patent eligibility, since his opinion in the Federal Circuit’s decision in CLS Bank v. Alice Corp. formed the basis for the Supreme Court’s decision in Alice Corp. v. CLS Bank.
Alice is one of three recent cases in which the Supreme Court has run amok seeking to rein in the patent system. This unholy triad includes Mayo v. Prometheus, about which we wrote here and Ass’n for Molecular Pathology v. Myriad (our article here), as well as Alice Corp. v. CLS Bank (our article here). These cases make it possible to challenge any patent on the theory that what it covers is not, in fact, eligible to be protected by a patent. It does not matter that the patent has been approved and issued by the Patent and Trademark Office. Nor does the presumption of validity, which normally applies to patents, help much to protect a patent from assault based on ineligible subject matter.
Although these Supreme Court decisions relate to patents in the fields of diagnostics (Mayo), biotechnology (Myriad), and computer-related inventions (Alice), their logic can be used to invalidate any patent, as Ultramercial shows. Furthermore, this invalidation can be achieved without a trial and without the formal exercise of determining what the claims in the patent actually mean.
According to these cases, even though the subject matter claimed appears to fit within a category of items that the Patent Act says can be patented (in this case a process carried out by a computer), the claims are not eligible for patent protection if they are directed to laws of nature, natural phenomena, or abstract ideas. (More)
The opinion was written by Judge Lourie, who is something of an expert on patent eligibility, since his opinion in the Federal Circuit’s decision in CLS Bank v. Alice Corp. formed the basis for the Supreme Court’s decision in Alice Corp. v. CLS Bank.
Alice is one of three recent cases in which the Supreme Court has run amok seeking to rein in the patent system. This unholy triad includes Mayo v. Prometheus, about which we wrote here and Ass’n for Molecular Pathology v. Myriad (our article here), as well as Alice Corp. v. CLS Bank (our article here). These cases make it possible to challenge any patent on the theory that what it covers is not, in fact, eligible to be protected by a patent. It does not matter that the patent has been approved and issued by the Patent and Trademark Office. Nor does the presumption of validity, which normally applies to patents, help much to protect a patent from assault based on ineligible subject matter.
Although these Supreme Court decisions relate to patents in the fields of diagnostics (Mayo), biotechnology (Myriad), and computer-related inventions (Alice), their logic can be used to invalidate any patent, as Ultramercial shows. Furthermore, this invalidation can be achieved without a trial and without the formal exercise of determining what the claims in the patent actually mean.
According to these cases, even though the subject matter claimed appears to fit within a category of items that the Patent Act says can be patented (in this case a process carried out by a computer), the claims are not eligible for patent protection if they are directed to laws of nature, natural phenomena, or abstract ideas. (More)
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