On May 21, 2012, the U.S. Supreme Court granted the petition for
a writ of certiorari in WildTangent v. Ultramercial
(Supreme Court Docket No. 11-962), vacated the judgment and
remanded the case to the United States Court of Appeals for the
Federal Circuit for reconsideration in light of the Supreme
Court's recent decision in Mayo Collaborative Services v.
Prometheus Laboratories, Inc., 566 U.S. ___ (2012), slip op.
(Mayo).
The patent at issue in this case claims a method of accessing
copyrighted material over the internet wherein advertisements are
displayed to the user in exchange for the copyrighted material. In
the now-vacated opinion, a panel of three judges of the Federal
Circuit explained that the use of advertisement to pay for
copyrighted material was an abstract idea, but an application of
that abstract idea "on an internet website" could be
patent eligible. Applying this rationale, the panel held that the
claimed method was patentable under Section 101 because "as a
practical application of the general concept of advertising and an
improvement over the prior art" they were "not so
manifestly abstract as to override the statutory language of
section 101." Ultramercial LLC v. Hulu LLC, 657 F.3d
1323, 1330 (Fed. Cir. 2011).
On petition for certiorari, the question presented to the Supreme
Court was: "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 U.S.C. § 101." While it did not answer this
question directly, the Supreme Court vacated and remanded the case
back to the Federal Circuit for further consideration in light of
Mayo.
In Mayo, its most recent decision on subject matter
eligibility under 35 U.S.C. § 101, the Supreme Court had held
that well-understood, routine, conventional activity is normally
not sufficient to transform an unpatentable law of nature into a
patent-eligible application of such a law. It had also held that
the "application" must be "significant," and
include other elements that constitute an "inventive
concept" that is significant and separate from the natural law
itself. Mayo, 566 U.S. ___ (2012), slip op. at 4.
What This Means for You
The law governing the scope of patent-eligible subject matter under section 101 is rapidly evolving. The Supreme Court's recent decision in Mayo, as well as its remands in this case and Association for Molecular Pathology v. USPTO (Supreme Court Docket No. 11-725), suggest that it views the scope of patent eligibility more narrowly than at least some recent panels from the Federal Circuit. Exactly how the Federal Circuit will interpret and apply Mayo to software and business method patents remains to be seen. In the meantime, there is considerable uncertainty in this area.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
