Tag Archives: patent-eligibility

Federal Circuit reverses course in Ultramercial v. Hulu; finds method of delivering advertisements to be an abstract idea

Yes or NoA method of providing advertising in connection with streaming media is not eligible for patenting, according to the latest decision of the Federal Circuit in the long-running Ultramercial v. Hulu patent saga.

Ultramercial’s patent claimed a method of distributing media over the Internet.  Claim 1 included eleven steps.  The steps described a process of associating ads with streaming media, allowing a consumer to access the media for free if the consumer first views the ad, and receiving payment from the advertiser after the consumer views the ad.

When the Federal Circuit first considered the claims in 2013, it found the claims to be patent-eligible. At the time, the court stated that ” it wrenches meaning from the word to label the claimed invention ‘abstract.'”  The court’s 2013 decision also stated that “the claim appears far from over generalized, with
eleven separate and specific steps with many limitations and sub-steps in each category.”

Fast forward to 2014, after the United States Supreme Court issued its decision in Alice v. CLS Bank.  The Alice decision established a two-part test for determining patent-eligibility: (1) Is the claim directed to an abstract idea? (2) If so, are there other elements in the claim sufficient to ensure that the claim amounts to significantly more than the abstract idea itself?

When faced with a new post-Alice appeal in the case, the Federal Circuit applied the new two-part test of Alice.  This time, the court reached a different conclusion Continue reading

U.S. patent law needs a definition of “abstract idea”

Recent U.S. Patent and Trademark Office actions relating to software patents have confused and frustrated many patent applicants. After the U.S. Supreme Court published its opinion in Alice Corporation Pty Ltd. v. CLS Bank Int’l, the USPTO’s application of the Court decision to software inventions has been anything but consistent. Does the USPTO’s action signal a need for Congressional action or another Supreme Court decision with more concrete guidelines?

In Alice, and as explained by the recent USPTO Preliminary Examination Instructions in view of the Supreme Court Decision in Alice, the determination of subject matter eligibility involves a two part test:  (1) Is the claim directed to an abstract idea?  (2) If so, are there other elements in the claim sufficient to ensure that the claim amounts to significantly more than the abstract idea itself?

However, rather than a rigorous application of any test, in the past few months the USPTO’s patent-eligibility determinations contain little analysis of any specific claim language. Instead, they primarily consist of a boilerplate paragraph stating that the claimed invention is directed to an abstract idea.

To illustrate this problem, the USPTO recently issued a rejection asserting that the following claim was patent-ineligible because it is directed to a “fundamental economic practice:”

8.   A device for predicting a future occurrence of a transportation system incident, the device comprising:
  a processor; and
  a computer readable medium operably connected to the processor, the computer readable medium containing a set of instructions configured to instruct the processor to perform the following:
          collect historic operating information related to the previous operation of a vehicle along a transportation route,
          determine schedule deviation information for the transportation route based upon the historic operating information and observed schedule adherence for the vehicle along the transportation route, the schedule deviation information comprising at least an identification of a driver and a sequence number for a period of time associated with the historic operating information and the observed schedule adherence,
          construct a plurality of models, each of the plurality of models including at least one combination of factors that contribute to schedule deviation,
          rank each of the plurality of models according to at least one information criterion,
          assess an impact of the driver and the sequence number on a highest ranked model to produce a results set, wherein the results set comprises at least a highest ranked model showing at least one combination of factors that most contributes to schedule deviation, and
          present the results set. Continue reading

Is the predicted “death of hundreds of thousands of patents” coming true?

In May 2013, Judge Moore of the U.S. Court of Appeals for the Federal Circuit predicted that the court’s decision in CLS Bank Int’l v. Alice Corporation Pty Ltd. would result in the “death of hundreds of thousands of patents, including all business method, financial system, and software patents as well as many computer implemented and telecommunications patents.”

In the year that followed, not much changed.  The U.S. Patent and Trademark Office continued to issue patents in these areas.  And the Federal Circuit issued other decisions affirming that software was still patentable.  While patents covering financial business methods and purely human activity faced difficulty, patents for non-financial software inventions continued to grant at a fast clip.

Then, in June 2014, the U.S. Supreme Court issued an opinion that affirmed the Federal Circuit’s decision. The Court’s decision in Alice Corporation Pty. Ltd. v CLS Bank Int’l said: “there is no dispute that many computer-implemented claims are formally addressed to patent-eligible subject matter,” and subsequent USPTO guidance suggested that “the basic inquiries to determine subject matter eligibility remain the same.” Soon afterward, however, the practical effect of the Court’s decision became quite different.

In the weeks following the Supreme Court decision, I’ve seen that the USPTO is rejecting nearly every application assigned to its business methods examining unit for failure to meet the post-Alice patent eligibility standard. Other patent attorneys have noted this too, and have commented on it with concern.

District Courts and the Patent Trial and Appeal Board have been similarly critical of software patents in recent weeks. Dennis Crouch of Patently-O recently published a comprehensive summary of District Court and PTAB decisions that overturned software patents after the Alice decision.

In addition, in one of its first published opinions that addressed the Alice decision, the Federal Circuit found an invention for a computer-implemented method and system for playing bingo to be a mere abstract idea and thus not patent-eligible. Although the case (Planet Bingo LLC v. VKGS LLC) is non-precedential, it may serve as a harbinger of things to come in future software patent cases.

The USPTO is continuing to issue patents for software-related inventions that are assigned to it’s non-business-method examining units, so it’s clear that at least some software remains eligible for patenting. However, it’s also clear that new and potentially significant challenges are now in place for those who want to obtain or enforce software patents in the future.