Patent Court Stands By Its Claim That Adding 'On The Internet' Can Make An Abstract Idea Patentable

from the oh-come-on dept

We've been following the Ultramercial case quite closely over the past few years. If you're not aware, this involved a company that more or less patented the idea of "you must watch this ad to get this content" (US Patent 7,346,545) and then sued pretty much everyone. Most of the companies it sued settled rather than fight (which happens all the time), including YouTube and Hulu, but one company, WildTangent, has continued the fight. Eventually, though, the case reached the Supreme Court with the key question being does taking an abstract idea like "watch this before getting that" and adding "on the internet" to it make it patentable? It's well established that you can't patent an abstract idea, but for some reason many seem to think that if you say "on the internet" it's no longer abstract. The Supreme Court did not do a full hearing on the case, but asked the appeals court of the federal circuit (CAFC -- known as the patent appeals court) to reconsider its original ruling in light of the Supreme Court's ruling in the Prometheus case, where it said that you can't patent broad medical diagnostics. The rule there was that you "could not simply recite a law of nature and then add the instruction 'apply the law.'" So, is the same true for "abstract idea" plus "on the internet"?

Apparently, for CAFC, the answer is that there is a difference, and that merely adding "on the internet" to an abstract idea makes it patentable. The ruling is quite incredible, not just for the fact that it sets up a ridiculous standard, but also for its technical naivete. CAFC basically says, gee, there are a lot of steps and graphs and charts in the patent, so, it's probably not abstract.
Viewing the subject matter as a whole, the invention involves an extensive computer interface. Unlike Morse, the claims are not made without regard to a particular process. Likewise, it does not say “sell advertising using a computer,” and so there is no risk of preempting all forms of advertising, let alone advertising on the Internet. Further, the record at this stage shows no evidence that the recited steps are all token pre- or post-solution steps. Finally, the claim appears far from over generalized, with eleven separate and specific steps with many limitations and sub-steps in each category. The district court improperly made a subjective evaluation that these limitations did not meaningfully limit the “abstract idea at the core” of the claims.
Part of the issue is that it needs to show something new here, and the court seems to argue that any software effectively creates a "new machine" based on some really wacky logic. It states "as computer scientists understand":
a programmed computer contains circuitry unique to that computer. That “new machine” could be claimed in terms of a complex array of hardware circuits, or more efficiently, in terms of the programming that facilitates a unique function.
Read that again. They're saying every software program creates "unique circuitry." That's how they claim this is a "new machine" making the idea patent eligible. However, as computer scientist, Tim Lee points out, this claim is "nonsense."

It seems that, once again, CAFC is not getting the Supreme Court's message clearly. We've already gone through this with Myriad and Mayo cases. In Mayo, CAFC twice ruled that diagnostic tests were patentable, even after the Supreme Court gave it an extra chance to correct that. That resulted in the Supreme Court slapping down CAFC and rejecting medical diagnostic patents. Then, CAFC, similarly did the same thing with gene patents, only to be smacked down just last week.

This is a nearly identical situation. CAFC rules one way ("yes, of course this abstract idea/thing of nature is patentable"), the Supreme Court says "are you sure?!? please look at this other ruling," and CAFC comes back with "yes, we're sure! patent patent patent!" The last few times that's happened the Supreme Court has had to smack CAFC down, and it looks like it may need to do so again.

Filed Under: abstract ideas, advertising, cafc, content, drm, on the internet, patent eligibility, patents, software patents, supreme court
Companies: hulu, ultramercial, wildtangent, youtube


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  1. identicon
    Eric J Weibel, 22 Jun 2013 @ 4:26am

    Patent Act of 1952 - CAFC

    Chief Judge Rader for the most part recycled his opinion from his dissent in CLS v. Alice. I've been working on writing this up and it is not quite complete. But just in looking at basic public documents, I've found a lot to contest Judge Rader's,(and Judge Moore's and Judge Newman's contention that in passing the Patent Act of 1952, on the "conservative" end, it intended to significantly broaden subject matter eligibility, and on the more lunatic end, that the congressional intent was to abandon the judicial exceptions entirely and rely on the text alone.

    I've made the following observations:

    1) Judge Rich, one of the non-elected people who drafted language submitted to the committee - when receiving an award, bragged about how the Patent Act of 1952 was passed. Stating that they maneuvered it so that there was no floor debate, and it was done on a consent calendar. He mentions that a lot of "hot air" was saved by doing it this way.

    Furthermore, he appears to have been proud that the "legislative history" was created AFTER the act was enacted. In other words, people involved with doing the write up, who were not elected, commented after the fact on what they thought the statute meant.

    2) I'm not a lawyer or an expert on legislation, but I found that the production of "legislative history" is an area rife with abuse. In one (non-patent) instance I found cited, a congressman is essentially quoted as saying I have an amendment I'd like to add, but if we can accomplish the same thing by "creating" legislative history after the fact - I'm OK with that. Justice Scalia has apparently dug up a lot of pretty egregious efforts to legislate after the fact in this regard.

    3) When the Patent Act of 1952 was put on the floor from committee for a straight vote without debate (which is a special procedure), congressman asked whether it was changing the law, or merely codifying the old law (modernizing and streamlining it). In one instance, the response was "It codifies the present patent laws." In another, "The bill simply constitutes a restatement of the patent laws of the United States."

    4) Even better, when it was in committee, a representative of a patent bar organization came in and complained that some verbiage had been removed from an earlier version. He fretted that this would not allow valid patents for inventions whose heart was a law of nature (which is similar to the restriction against abstract ideas). In sparring with the person running the committee and sponsoring the legislation, he is repeatedly informed that "there is no intention to change the law as it is presently written: the purpose is just to make it clearer." Eventually the congressman essentially tells him that to change the law he should do separate legislation, because changing the law in this area was not the purpose of the legislation.

    From all this it seems pretty clear that most members of Congress did not think they were voting to repeal or significantly scale back the judicial exceptions to eligible subject matter when they enacted the Patent Act of 1952. At a minimum this should be carefully investigated.

    This is also I think a cautionary tale with respect to patent reform. We have to be sure to avoid this sort of trojan horse strategy both from the patent bar and from others with vested economic interests (large corporations) as legislation is enacted.

    The writeup I am working on is here:
    www.altageneral.com/cls-v-alice-en-banc-patent-act-of-1952.php

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