Why Does An Unpatentable 'Abstract Idea' Become Patentable If You Add 'On The Internet'?

from the good-question dept

Back in 2009, we wrote about a case involving a company called Ultramercial, which held a broad and ridiculous patent (7,346,545) that effectively covered the process of watching an ad before you could download content (seriously). Ultramercial sued Hulu, YouTube and WildTangent over this. The case went back and forth with an initial ruling that rejected the patent, by noting that it was just an “abstract idea” and abstract ideas are not patentable. As that court ruling noted:

At the core of the ‘545 patent is the basic idea that one can use advertisement as an exchange or currency. An Internet user can pay for copyrighted media by sitting through a sponsored message instead of paying money to download the media. This core principle, similar to the core of the Bilski patent, is an abstract idea. Indeed, public television channels have used the same basic idea for years to provide free (or offset the cost of) media to their viewers. At its heart, therefore, the patent does no more than disclose an abstract idea.

Tragically, CAFC, the appeals court that handles patent matters and has a long history of expanding patent law, reversed the lower court’s ruling and deemed the patent valid. While it didn’t put it in these words specifically, it certainly appeared that the court was saying that any abstract idea can still be patentable if you just make it happen “on the internet.”

In that ruling, the court discusses the fact that “abstract ideas” are not patentable, and notes that it used to use its machine-or-transformation test to determine if something was or was not an abstract idea. However, after the Supreme Court ruled in the Bilski case that this test might not always be appropriate, while failing to say what test would be appropriate, it’s left CAFC with the freedom to make up totally arbitrary rules. And in this case, the arbitrary rule was effectively “we don’t apply the machine-or-transformation test to ‘information age’ inventions.” Why? Because if the inventions aren’t physical, the machine or transformation test no longer applies:

While machine-or-transformation logic served well as a tool to evaluate the subject matter of Industrial Age processes, that test has far less application to the inventions of the Information Age…. Technology without anchors in physical structures and mechanical steps simply defy easy classification under the machine-or-transformation categories.

Shorter version: what would be considered unpatentable abstract ideas in the offline world suddenly become patentable if you add “on the internet” to them.

That doesn’t sound right to lots of people, and thankfully WildTangent is appealing the case and hoping the Supreme Court will hear it. As the petition to the Supreme Court notes, the question presented is:

Whether, or in what circumstances, a patent’s general and indeterminate references to “over the Internet” or at “an Internet website” are sufficient to transform an unpatentable abstract idea into a patentable process for purposes of 35 U.S.C.

Along with the petition, there were also two interesting filings in support, urging the Supreme Court to hear the case. One from Redhat, CCIA and EFF, which goes into great detail about how such broad patentability would seriously harm the open source world, and a strongly worded brief from Google and Verizon (yes, together) about how such a ruling would do serious harm to innovation by allowing all sorts of abstract ideas to be locked up via patent. Hopefully the Supreme Court is willing to listen — and will push back (yet again) on a bad CAFC ruling.

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Companies: ccia, eff, google, hulu, ultramercial, verizon, wildtangent, youtube

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Comments on “Why Does An Unpatentable 'Abstract Idea' Become Patentable If You Add 'On The Internet'?”

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Ima Fish (profile) says:

I’ve wondered the same thing myself, like with Amazon’s recent patent for annotating ebooks.

There is simply no way anyone could have patented a system and method for scribbling notes on the sides of pages. But yet, if it’s on a computer, it’s somehow completely patentable.

Another one is eBay’s patent for online auctions. Why can eBay get a patent for holding auctions on the net, but I can’t get one for holding auctions in a brick building?

Steerpike (profile) says:

It is well past time the legislature got directly involved in the areas of software and business method patents. This assumes they would do the right thing (don’t laugh). It has to be better than all the uncertainty coming out of the courts, who are going back and forth trying to come up with a place for these types of ‘inventions’ within the patent laws.

The Courts are supposed to apply the law Congress has written, which is fairly broad in this case and which hasn’t changed much at a basic level (definition of what is patentable) in a long time. Technology has outpaced the statute, and in situations like this Congress is supposed to clarify things by going in amending the statute. If they wanted to eliminate these sorts of inventions altogether, they could do so. At the very least they need to provide some certainty to the marketplace.

Ed C. says:

Re: Re:

If they wanted to eliminate these sorts of inventions altogether, they could do so.

Congress can’t “eliminate” inventions, of any sort. What it can do is revise the wishywashy standards the USPTO and courts are using to determine the validity of patents. Merely “inventing” something, on the net or otherwise, is only one factor that is supposed to be used in determining patentability. What we have now, especially for big patent firms, is a legal slot machine–where applications are submitted and resubmitted until there’s a pay out. It’s to the point that even being an original invention, the most basic and fundamental requirement, isn’t evenly applied. It’s a F’ing joke.

Of course, none of this even applies to this patent, it’s not an invention in any sense of the word.

Ed C. says:

Re: Re: Re:3 Re:

Really? You don’t get this: “What it can do is revise the wishywashy standards the USPTO and courts are using to determine the validity of patents.”? That Congress can (by statute) change the vague and inconsistent standards that are currently being used by the USPTO and courts?

It’s not just software patents that are the issue, or even process patents in general. It’s that the basic standards which are supposed to be applied to all patents aren’t being applied consistently. Why is it that a patent which is rejected 5 or even 10 times for failing to meet the qualifications for patentability can suddenly become “patentable” merely by landing on the desk of yet another examiner? To it’s credit, the USPTO isn’t just rubberstamping bad patents. But companies have come to realize that if they get rejected, they can just pay the fee again and resubmit over and over until it gets approved. Patents should be approved by merit, not perseverance. It becomes, in effect, a patent slot machine.

Sorry if you think I was being lazy for not spelling that out in detail before.

Bengie says:


I think the revocation of patents should be handled by a democratic vote of a random poll of workers of said profession. If 80%+ of said professionals claim something to be “obvious”, then the patent should be revoked.

If you don’t know how something works, you shouldn’t be making any decisions about it.

ken (profile) says:

Software Patents is Pounding Square Peg into Round Hole

Since the courts and not Congress opened the flood-gates to software patents there was no way to tailor patent law to fit software and how it is developed so now we are constantly having to pound a square peg into a round hole. Congress could remedy this and change patent law to make it more compatible but there are still inherent problems with applying the very concept of a patent to software.

With software you are merely writing a set of instructions to command the computer to do something it can already inherently do. Very view programs use completely new and unique algorithms but ones that are already built into and part of the programming language and widely used throughout the Industry. Writing a program is more a kin to writing a story and the thought of program patents makes about as much sense as patenting a plot of a story since according to Edgar Alan Poe every story can fit into six basic plots and no one to date has been able to disprove this. you can see how restrictive and unworkable it would become if plots could be patented. Same goes for software.

Steerpike (profile) says:

Re: Re: Software Patents is Pounding Square Peg into Round Hole

Recipes are patented, however. In a sense, anyway. You can find patents for bread dough and frosting and other food items going back to at least the 1950s. They get patented as compositions, where a frosting may have X% fats, Y% sugars, etc. Not a recipe in the sense of “add a tablespoon of salt,” but the final composition that comes out as a result of the recipe has long been protectable.

Anonymous Coward says:

Because it's [drum roll]... Magic!

Why Does An Unpatentable ‘Abstract Idea’ Becomes Patentable If You Add ‘On The Internet’?

Because, when described, any process, no matter how simple, that involves That Internet Thang, or invokes the word “Internet,” exposes those in the immediate vicinity to Magic Pixie Dust(tm). Exposure to Magic Pixie Dust(tm) has the primary effect of blinding gullible five-year-olds and otherwise reasonable/intelligent appellate-court judges to obviousness, and has been shown, empirically, to have at least /some/ influence over justices of the Supreme court. (Studies are ongoing.)

Other symptoms of exposure to Magic Pixie Dust(tm) resemble those of excessive alcohol consumption, and may include, but are not limited to: texting while driving; striking one’s head on the edge of one’s desk while picking up a dropped paperclip; failure to remove cat hair from one’s robes and other clothing items; bad judgment when/by selecting food items at McDonald’s; mistaking the Internet for magic; illegal discharge of a firearm in a public restroom; ridicule by ones peers.

Magic Pixie Dust(tm) should /not/ be combined with thinking-related activities, and should /never/ be ingested while practicing law in public.

Andrew D. Todd (user link) says:

Immediate Obviousness of the Internet as Consolidated Prior Art over Computers.

I think this can better be discussed in terms of immediate obviousness and prior art, rather than patent eligibility. For example, various people back in the 1980’s taught “client-server programming” as a general technique, ie. that you could take any program and break it down into a client program and a server program, and connect them over a telecommunications link. When I say, “taught,” I mean that literally, meaning they taught it in college classes, and flunked those students who didn’t get it. Likewise, there is old prior art for the general technique of accessing a mainframe computer via a terminal and running any program in a terminal session. Similarly, there is old prior art for doing so over a dial-up telephone connection, which is to say, via a switching network. Similarly, there is old prior art referring to TCP connections as “teletype sessions.” By 1990, there was a well-defined “complex” of taught knowledge, in terms of which using the internet was a normal adjunct of using a computer. When the Supreme Court opined, in KSR v. Teleflex, that merely putting something on a computer did not create patentable novelty, this logically covered the internet as well.

What I hope might happen is that the Supreme Court might choose to rule on the idea of “abstract school knowledge,” the highly generalized ways in which technical subjects are taught in colleges and universities.

Steerpike (profile) says:

Re: Immediate Obviousness of the Internet as Consolidated Prior Art over Computers.

That sort of thing should already be sufficient under the patent law to render an invention “obvious.” The problem is, the patent examiners still rely primarily on the patent literature for their rejections. They don’t do a whole lot of searching outside of what is in the patent databases.

There’s a practical problem in terms of getting the relevant art in front of the examiners.

Anonymous Coward says:

Re: Immediate Obviousness of the Internet as Consolidated Prior Art over Computers.

This is the genius of the patent system. Add “On The Internet” to anything and it becomes patentable!

For example:

“scratch your ear” — not patentable
“scratch your ear on the internet” — It’s a work of genius! Plainly novel and non-obvious! Patentable!

“drink a cup of tea” — not patentable
“drink a cup of tea on the internet” — Brilliant! Patentable!

“fart” — not patentable
“fart on the internet” — What an advance! Patentable!

We should all be deeply grateful for the clever, selfless and dedicated bureaucrats and businessmen who have given us the magic of the patent system. Calling them “thieving lawyers” and “rent seekers” is just vicious and uncalled for.

Anonymous Coward says:

I have wondered why you think the internet deserves a special pass for a very long time. You seem to be under the delusion that just because piracy has moved from the back alley ways to the internet that enforcement of existing laws should cease. You prefer to call it “infringment” and seem to think that the only cause of piracy is the industry underserving their customers. Why is it that the most pirated content is the most popular content – content that is available ubiquitously through legitimate sources. Using your logic (that if the media were available legitimately there wouldn’t be piracy) it would only make sense that if the content is available in multiple formats, from dozens of sources the rate of piracy for that content should be less than other content with limited availability. The problem with that theory is that reality proves that the primary driving force of piracy is the ease of access to pirated content. There are so many sources available for pirating content and the risk of prosecution is very low. If pirated content was harder to get or if the risks associated with piracy were increased you would see more people obtaining content from legitimate sources.

Josef Anvil (profile) says:

Re: Re:

Wow. To call that comment an EPIC FAIL would not truly do it justice. It’s more like an Epic Fail drenched in Awesome Sauce.

“The problem with that theory is that reality proves that the primary driving force of piracy is the ease of access to pirated content.”

Actually with the rise of services like Spotify, you are finding that there is a drop in the “piracy” of online music. It’s not just ease of access, it’s also about price. If the price is low enough and the convenience high enough, then yes, the rate of piracy will dip toward zero.

“If pirated content was harder to get or if the risks associated with piracy were increased you would see more people obtaining content from legitimate sources.”


If the content were harder to get at and/or the risks were increased, you would see some people using legitimate sources and consuming much less; and some would simply stop consuming media from pirate sites but still share a lot.

I think your opinion comes from a severe lack of understanding of how the internet works. Few people think about Skype or Yahoo Messenger or MSN messenger or all the other messengers out there, as p2p software, but they are. I can share files with my friends on Facebook as well. Once the content is out there and people are willing to share it, there isn’t much that can be done to stop it. That is the nature of human beings, we like things and we share with our friends. From the consumer point of view, the artist has already been paid a few times over by the time the media gets to us. Let the artist make something new or just wait for royalties. We don’t care.

Anonymous Coward says:

Re: Re:

I fail to see the relevance of this argument, but I’ll bite anyways.

“You prefer to call it “infringement” and seem to think that the only cause of piracy is the industry underserving their customers.”

“The problem with that theory is that reality proves that the primary driving force of piracy is the ease of access to pirated content.”

So, by extrapolating these remarks, all the content industries needs to do is make their product ubiquitously available on the internet at reasonable prices. Every time they push another ‘release window’ on us, more are driven to piracy. Also, no more $20 HD blu-rays. More like $2 .mkv’s. Play the high volume/low margin game. I think it’ll really work out for them.

I’m still just not seeing how your remarks relate to the obviousness of patents.

Anonymous Coward says:

Re: Re: Re:

“I’m still just not seeing how your remarks relate to the obviousness of patents.”

Simple, they don’t. It’s just the same usual troll attempting to say “Ha! I knew you supported piracy, Mike! And here’s how I can prove it…” He then just essentially nitpicks various things Mike’s said in the past and then puts his own trollish spin on them and makes an argument that attacks those points, rather than address anything significant.

He’s probably one of the same trolls who reads the “studio/label screws artists” articles and then blames it on the artists. Or when an artists complains about some problem with studios/labels or points out how they can do better, he comes along and says “well, I don’t know who this person is, so obviously they’re a nobody and as such what the f*ck do they know”.

These trolls suck as far as trolling go. They’re more of a nuisance in a “sigh, this same ol’ BS again”. Best to just try and ignore their stupidity. Or beat it with such insane logic and verifiable facts that they have no choice left but to sputter “but but but” and then withdraw in defeat from the article for the rest of the day.

Ed C. says:

Re: Solution

Well yeah? I’ll file a patent on the method of taking vague business requirements, defining them with algorithms and flowcharts, and then further redefining them in broad legalese into…a patent!

Sure, you may try to claim prior art from other business patents, but I challenge anyone to find even one on the process of creating business patents!

staff says:

another biased article

“ridiculous patent”

definition: one we don’t own or control

Masnick and his monkeys have an unreported conflict of interest-

They sell blog filler and “insights” to major corporations including MS, HP, IBM etc. who just happen to be some of the world?s most frequent patent suit defendants. Obviously, he has failed to report his conflicts as any reputable reporter would. But then Masnick and his monkeys are not reporters. They are patent system saboteurs receiving funding from huge corporate infringers. They cannot be trusted and have no credibility. All they know about patents is they don?t have any.

Jose_X (profile) says:

swpats are sick. they're a gas.

As long as software is digital “writing”, which exists independently of all machines and can be inserted (conceptually) into any digital machine trivially, it will continue to be abstract and violate free speech and individual liberties. Needless to say, it will continue to stifle the progress and pose unfair burden on most small software developers.

Current sw patents go further. They are terrifically broad. Almost any client (with a little bit of help from a software developer) can come up with all the requirements that typically make up the broad patent claims that control scope of infringement. But improving this broadness problem, and forgetting for a moment that sw is still abstract writing and independent invention should never be curtailed, we have the problematic patent law itself that stipulates that to pass the inventiveness bar an invention be merely “non-obvious to a person having ordinary skill in the art”.

Non-obvious : like a little harder than easy.

Ordinary : as judged by people in the fat part of the bell curve… leading to many geniuses and smart folks and hard working average developers being pre-empted and hand-cuffed.

PCL says:


I can see the case for allowing patents for abstract methods or algorithms, but like all other patents, shouldn’t they have to be novel and non-obvious. The idea of running an add before being able to access a video or news story is neither and could probably be struck down with “prior art” arguments. YouTube’s method of playing the add for a minimum time period, then allowing the user to keep playing it or click out of it would make for a much narrower claim with a much higher chance of being proved novel and considered non-obvious. Since it gives YouTube (and its sponsors) instant feedback on how well they target their adds, it’s much more of an advance over previous attempts of put adds in front of users.

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