In Ultramercial Inc. v. Hulu, LLC, the Federal Circuit stated a method for offering free videos in exchange for watching advertisements is not patent eligible subject matter under 35 USC 101.
Let's examine part of this opinion that indicates how the abstract idea exception to patent eligibility gives wide latitude to judges:
Federal Circuit: "We first examine the claims because claims are the definition of what a patent is intended to cover. An examination of the claim limitations of the '545 patent shows that claim 1 includes eleven steps for displaying an advertisement in exchange for access to copyrighted media. Without purporting to construe the claims, as the district court did not, the steps include: (1) receiving copyrighted media from a content provider; (2) selecting an ad after consulting an activity log to determine whether the ad has been played less than a certain number of times; (3) offering the media for sale on the Internet; (4) restricting public access to the media; (5) offering the media to the consumer in exchange for watching the selected ad; (6) receiving a request to view the ad from the consumer; (7) facilitating display of the ad; (8) allowing the consumer access to the media; (9) allowing the consumer access to the media if the ad is interactive; (10) updating the activity log; and (11) receiving payment from the sponsor of the ad."
Bob: Okay, claim 1 requires eleven steps that define the invention.
Federal Circuit: "This ordered combination of steps recites an abstraction—an idea, having no particular concrete or tangible form."
Bob: What happened to the eleven steps of claim 1?
Federal Circuit: "The process of receiving copyrighted media, selecting an ad, offering the media in exchange for watching the selected ad, displaying the ad, allowing the consumer access to the media, and receiving payment from the sponsor of the ad all describe an abstract idea, devoid of a concrete or tangible application."
Bob: Why does claim 1 recite an abstraction? The Federal Circuit makes a conclusion without much analysis. If the method allows the public to see free videos in exchange for watching ads how is this merely an abstract idea? It may not be novel or unobvious, but the claimed invention is in the real world. It would read on a service (e.g., YouTube) that allows people to watch ads (nobody likes) so they can watch they want to watch (e.g., soccer, real guitars) on a computer display. The method is implemented on the Internet, a global network of networked computers. This is a concrete and tangible application. So a judge gets to decide that it all adds up to an abstract idea, devoid of a concrete or tangible application, but what constrains that decision?
I don't see a real constraint exists on a judge's decision to make up an abstract idea, once we begin the process of allowing dissection of the claim. Unlike 35 USC 103, a judge applying Alice doesn't have to consider the subject matter of the claim as a whole. And once we allow the judge to split the claim into an abstract part and non-abstract part, what determines the "line" between abstract and non-abstract in the claim? Step 1 of Alice says identify if the claim recites an abstract idea. How does a judge decide? The judge selects a subset of the claim (e.g., the preamble) and thus the judge sets the line. Step 2 then asks if the remainder of the claim, that is, the non-abstract part of the claim is an inventive concept. If the judge thinks the non-abstract part is conventional, the judge concludes "no inventive concept." And now the test is completed, and the claim is deemed ineligible. The two-part Alice test is a mental process without reference to the prior art requirements of 35 USC 102. This patent eligibility test is the ultimate "abstract idea."
And as long as we ignore the broad language of 35 USC 101 that was purposely framed that way to promote innovation, bootstrap the novelty (35 USC 102) and obviousness (35 USC 103) analysis into 35 USC 101, we will see too many software inventions held ineligible for patents. I don't think any reasonable person wants obvious subject matter to get patent protection, but when we eliminate the requirement to assess the subject matter against the real world, i.e., prior art, we are left with just a judge's opinion with inadequate constraints.
Note Judge Mayer in concurrence goes further seeking to establish patent eligibility is a threshold question, arguing we give no presumption of validity to the USPTO's determination that the claims satisfy 35 USC 101, and ultimately arguing Alice establishes a "technological arts test for patent eligibility."
Also see WildTangent v. Ultramercial - Supreme Court Rejects Federal Circuit Decision on 35 USC 101.
Copyright © 2014 Robert Moll. All rights reserved.
