Ultramercial v. Hulu - Judge Rader clips the wings of the "abstract idea" exeption to software invention eligibility
My thanks for this guest post from Greg Stark at Schwegman, Lundberg & Woessner, P.A.
Attached is a annotated copy of the June 21st decision from the Federal Circuit in Ultramercial v. Hulu. ULTRAMERCIAL v Hulu 10-1544.Opinion.6-19-2013.1 The underlying patent (7346545) is directed towards a method for monetizing and distributing copyrighted material over the Internet. Chief Judge Rader pens a good decision for the software patent community attempting to clarify (and mitigate) any fallout from the CLS decision. (See my posting of May 10) The decision is careful not to craft new law, but rather to apply previous precedent in a more thoughtful manner.
Rader is careful to point out that all issued patents should carry the presumption of being directed to patent subject matter, and that this presumption must be overcome by clear and convincing evidence. In highlighting the presumption of validity, Rader appears to be attempting to prevent courts from boiling claims down to their abstract idea and then routinely deeming them ineligible subject matter (as all meaningful limitations are removed in the process).
The summary quote in reference to computer-implemented inventions holds that “a claim tied to a computer in a specific way, such that the computer plays a meaningful role in the performance of the claimed invention, it is as a matter of fact not likely to pre-empt virtually all uses of an underlying abstract idea, leaving the invention patent eligible.”
Rader attempts to provide guidance on determining when a method is or is not abstract, by holding that any claim that includes meaningful limitations restricting it to an application, rather than merely an abstract idea, is patent eligible subject matter.
Rader provides the following guidance on when claims are not meaningfully limited to an application:
[A] claim is not meaningfully limited if it merely describes an abstract idea or simply adds “apply it.” (page 18, quoting Prometheus)
We also know that, if a claim covers all practical applications of an abstract idea, it is not meaningfully limited. See id. at 1301-02. (page 18)
Pre-emption is only a subject matter eligibility problem when a claim pre-empts all practical uses of an abstract idea. (page 19)
It is not the breadth or narrowness of the abstract idea that is relevant, but whether the claim covers every practical application of that abstract idea. (page 19)
Finally, the Supreme Court has stated that a claim is not meaningfully limited if its purported limitations provide no real direction, cover all possible ways to achieve the provided result, or are overly-generalized. See Prometheus, 132 S. Ct. at 1300. (page 20)
Other Interesting quotes:
A court cannot go hunting for abstractions by ignoring the concrete, palpable, tangible limitations of the invention the patentee actually claims. (page 16)
A claim also will be limited meaningfully when, in addition to the abstract idea, the claim recites added limitations which are essential to the invention. (page 21)
Because a new combination of old steps is patentable, as is a new process using an old machine or composition, subject matter eligibility must exist even if it was obvious to use the old steps with the new machine or composition. (page 22)
When assessing computer implemented claims, while the mere reference to a general purpose computer will not save a method claim from being deemed too abstract to be patent eligible, the fact that a claim is limited by a tie to a computer is an important indication of patent eligibility. (page 23)
This inquiry focuses on whether the claims tie the otherwise abstract idea to a specific way of doing something with a computer, or a specific computer for doing something; if so, they likely will be patent eligible. (page 23)
In other words, 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. (page 31).
Editors note: One line in Judge Radar’s opinion that I honed in on was this: “The plain language of the statute provides that any new,
non-obvious, and fully disclosed technical advance is eligible for protection.” (page 10, emphasis added). Here again, there is a reference to a technical software inventions being distinguished from abstract ideas or business methods. Let’s hope this approach gains some traction, as we can definitely work with that test.
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