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":
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
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.