The Supreme Court is pushing Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. ___ (2012)(Mayo) as the standard to use in assessing whether software/Internet related subject matter is eligible for patent protection.
In WildTangent v. Ultramercial, the Supreme Court recently wrote: The petition for a writ of certiorari is granted [G]. The judgment is vacated [V], and the case is remanded [R] to the United States Court of Appeals for the Federal Circuit for further consideration in light of Mayo.
The question presented? 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 USC 101? Supreme Court Rule 14 requires the questions presented for review should not be argumentative, but apparently it didn't matter.
In Mayo, the Supreme Court rejected a medical diagnostic patent as encompassing an unpatentable law of nature once you remove the conventional steps. Justice Breyer's analysis dissects the claim: (1) to determine what is conventional in the claim; (2) to subtract the conventional part from the claim; and (3) to determine if the remaining part of the claim sets forth a law of nature (i.e., scientific principle). If the answer is yes to (3), the claim is ineligible for a patent according to Justice Breyer, since judicial law says you can't patent a law of nature. However, this conflates the patent eligibility of 35 USC 101 with the rejected point of novelty test.
The Federal Circuit had held US Patent No. 7,346,545 (the '545 patent) patentable subject matter. It relates to a particular method of giving a copyrighted product to a consumer for watching an advertisement over the Internet.
Claim 1 is representative for this analysis:
1. A method for distribution of products over the Internet via a facilitator, said method comprising the steps of:
first step of receiving, from a content provider, media products that are covered by intellectual-property rights protection and are available for purchase, wherein each said media product being comprised of at least one of text data, music data, and video data;
a second step of selecting a sponsor message to be associated with the media product, said sponsor message being selected from a plurality of sponsor messages, said second step including accessing an activity log to verify that the total number of times which the sponsor message has been previously presented is less than the number of transaction cycles contracted by the sponsor of the sponsor message;
a third step of providing the media product for sale at an Internet website;
a fourth step of restricting general public access to said media product;
a fifth step of offering to a consumer access to the media product without charge to the consumer on the precondition that the consumer views the sponsor message;
a sixth step of receiving from the consumer a request to view the sponsor message, wherein the consumer submits said request in response to being offered access to the media product;
a seventh step of, in response to receiving the request from the consumer, facilitating the display of a sponsor message to the consumer;
an eighth step of, if the sponsor message is not an interactive message, allowing said consumer access to said media product after said step of facilitating the display of said sponsor message;
a ninth step of, if the sponsor message is an interactive message, presenting at least one query to the consumer and allowing said consumer access to said media product after receiving a response to said at least one query;
a tenth step of recording the transaction event to the activity log, said tenth step including updating the total number of times the sponsor message has been presented; and
an eleventh step of receiving payment from the sponsor of the sponsor message displayed.
Frankly, Judge Rader understands 35 USC 101 and correctly held claim 1 patentable, since it requires a computer executing a software program with considerable complexity. This is not an abstract idea. It may have not been so great, however, to say the '545 patent discloses a practical application of an idea, because it sounds like State Street rather than In re Bilski. Anyway, now that the Federal Circuit has to deal with the GVR, it will be reconsidering whether or not claim 1 is patentable subject matter under 35 USC 101. At least the Federal Circuit refused the temptation to talk about the gist of the '545 patent being an idea that advertising can be used as a form of currency. Too often the press, the courts, and the patent community give a pithy summary of the claim that sticks to everyone's mind and never get back to the actual claim language, which impacts the legal analysis.
35 USC 101 does not support the Supreme Court's willingness to jump into the long standing software patent debate (Congress had an opportunity to legislate software patents out of existence in the recently passed America Invents Act, but remained silent), and require the Federal Circuit instead apply this new Mayo test that dissects a patent claim, discards whatever a court thinks is conventional then determines subject matter eligibility with whatever remains in the claim. Instead, Mayo's point of novelty patent eligibility test merely helps the Supreme Court implement its desire to rein in patents.
Copyright © 2012 Robert Moll. All rights reserved.
