Ultramercial, Inc. et al. v. Hulu, LLC et al.


Docket Nos. 2010-1544
LOURIE, MAYER, O’MALLEY
November 14, 2014

Brief Summary: Ultramercial’s claims were reconsidered under USSC Alice decision and found only to “describe[]…the abstract idea of showing an advertisdement before delivering free content” that “simply instruct the practitioner to implement the abstract idea with routine, conventional activity” (“invocation of the Internet also adds no inventive concept”).

Summary: This case was in front of the DC in 2010 in which it held the patent at issue did not claim patent-eligible subject matter. The FC reversed in 2012 and WildTangent filed a petition for a writ of certiorari to the Supreme Court (SC) which vacated the decision. The FC again reversed (2013), and WildTangent again filed a petition for certiorari. While that petition was pending, Alice Corp. (US 2014) was decided, affirming the FC judgment that method and system claims “directed to a computer-implemented system for mitigating settlement risk by use a third-party intermediary [were invalid] under § 101 because the claims ‘add nothing of substance to the underlying abstract idea’” (“an abstract idea does not move into § 101 eligibility territory by ‘merely requir[ing] generic computer implementation”). The 2013 FC decision was therefore vacated and remaned for further consideration in view of Alice, which is subject of this opinion. Following the first step in the Alice framework, it was first determined that the eleven claimed steps “for displaying an advertisement in exchange for access to copyrighted media”, “[t]his ordered combination of steps recites an abstraction-an idea, having no particular concrete or tangible form” (only “describes…the abstract idea of showing an advertisdement before delivering free content”). The second Alice step requires examination of the claims “to determine whether the claims contain an ‘inventive concept’ to ‘transform’ the claimed abstract idea into patent-eligible subject matter” (which must be “more than simply stat[ing] the [abstract idea] while adding the words ‘apply it’”). Here, it was determined the claims “do not transform the abstract idea they recite into patent-eligible subject matter because the claims simply instruct the practitioner to implement the abstract idea with routine, conventional activity” (“invocation of the Internet also adds no inventive concept” and “is not sufficient to save the patent under the machine prong of the machine-or-transformation test” (which can provide a “useful clue” in the second step)). Accordingly, the DC decision was affirmed. Judge Mayer concurred but wrote separately to address “whether claims meet the demands of 35 USC § 101 is a threshold [litigation] question”, that “no presumption of eligibility attends the section 101 inquiry”, and that “Alice…for all intents and purposes, set[s] out a technological arts test for patent eligibility” (“Ultramercial’s asserted claims is an entrepreneurial rather than a technological [inventive concept]” and therefore “fall outside section 101.”)

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