Ultramercial一案始於控告Hulu、YouTube和WildTangent侵犯了美國專利第7,346,545號的專利權。該發明是針對於一種在網路上散布著作權產品，而消費者不需要付費，只要點選廣告，就可以獲得具有著作權的產品，而讓廣告商來支付著作權費用的方法。這件案子在美國聯邦巡迴上訴法院(the U.S. Court of Appeals for the Federal Circuit，CAFC)的判決結果是：該發明係具有專利適格性。然而，這件案子最後上訴到了最高法院，最高法院將這件案子發還CAFC重審，並要求CAFC參考Alice Corp. v. CLS Bank一案中的判決內容後重新審議。
這個案件(Ultramercial Inc. v. Hulu LLC (Fed. Cir. 2014)) 最近判決確定了，而且判決結果還挺有趣的，因為它建立了一些如何將Alice一案的判決應用到已核准的美國電腦專利上的洞見。這個案件的詳細內容是，CAFC認為請求項第1項描述了一個「對不具有具體或有形的形式之抽象概念的步驟加以描述之順序組合」。最高法院更指出，「接收著作權產品、選擇廣告、藉由讀取廣告來交換產品、顯示廣告、允許消費者取得所選產品、並且自廣告贊助商的付款等等的過程，都是在描述一個抽象概念，並且缺乏一個具體或有形的應用內容」。它也認為「某些附加的限制條件，例如查閱活動日誌，是可以增加一定程度的特殊性」，不過這些限制條件顯然不足以使得請求項脫離抽象概念的範疇。最高法院認為，該請求項僅包含「傳統步驟，而且是非常普遍的東西」。該請求項需要使用網路，並且主張網路就是具體、有形的系統，只不過最高法院仍認為，「使用網路並不足以使得該抽象概念之請求項，得以免於受到§101對不適格標的核駁。」
Ultramercial – Does it go even further than Alice? Stefano John NAIP Education & Training Group / European Patent Attorney
Ultramercial started infringement proceedings against Hulu, YouTube, and WildTangent for infringement of U.S. Patent No. 7,346,545. As the court summarized it, the invention being claimed was directed to "a method for distributing copyrighted media products over the Internet where the consumer receives a copyrighted media product at no cost in exchange for viewing an advertisement, and the advertiser pays for the copyrighted content." The case reached a decision from the Court of Appeal of the Federal Circuit which decided that it did cover patent eligible subject matter. The decision was then appealed to the Supreme Court which remanded the case back to the Federal Circuit (CAFC) for further consideration in view of the Alice Corp. v. CLS Bank decision.
This decision came out recently (Ultramercial Inc. v. Hulu LLC (Fed. Cir. 2014)) and was interesting as it set out some interesting insights into how to apply Alice to previously granted US computer based invention patents. On the specifics of the case, the CAFC found that claim 1 recited an "ordered combination of steps recit[ing] an abstraction -- an idea, having no particular concrete or tangible form." The Court also noted that "[t]he 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." The Court acknowledged that "certain additional limitations, such as consulting an activity log, add a degree of particularity", but that these limitations were apparently insufficient to render the claim anything but abstract. The Court found that the claim included only "conventional steps, specified at a high level of generality." The claim required use of the internet, and it was argued that the internet was a concrete, tangible system, but the Court stated that "use of the Internet is not sufficient to save otherwise abstract claims from ineligibility under §101."
What can be concluded from the above is that innovations which reside in non-physical inventions, such as software will have more difficulty in overcoming §101 objections. What may worry some holders of US software patents is that , in this ruling, the patentability of the non-physical steps has to pass a very high standard to overcome a §101 objection. The Court noted that even though some steps of the claim "were not previously employed in this art [that] is not enough -- standing alone -- to confer patent eligibility upon the claims at issue." Hence, even though the novelty of the non-physical step is acknowledged, this seems immaterial to the § 101 objection. Some commentators conclude that this is because the Court believed the claim was “too broad” (given that no prior art was explicitly cited to make an obviousness rejection). It is however worth noting that the novel step was deemed as not adding enough to already known abstract ideas/practices “The claims’ invocation of the Internet also adds no inventive concept”, which suggests that it passed the novelty but not the non-obviousness test.
It would also seem that the trick of adding physical limitations to the claims is not enough to overcome the objections because they can be attacked as being routine, conventional, or general-purpose. In the above case, the activity log was seen as being generic and the internet was not considered a physical entity. Some commentators have come to conclude, as a result of this case, that the Courts would want all computer-based inventions to involve design of a new physical device, or at least some improvement thereof!
Judge Mayer then turned to the issue of how § 101 objections, in light of Alice and the present decision, should be handled with already granted US computer-based invention patents. He stated that Alice "set out a technological arts test for patent eligibility." He continued, arguing that because "the PTO has for many years applied an insufficiently rigorous subject matter eligibility standard, no presumption of eligibility should attach when assessing whether claims meet the demands of section 101." Such an idea would seem to contradict Statute (35 U.S.C. § 282 plainly states that "[a] patent shall be presumed valid."). However it is worth noting that, in backing this statement, the Court also applied the Machine-or-Transformation test to the invention claimed and it also failed that test. The only machine they could identify was the internet and the only transformation were "manipulations of public or private legal obligations or relationships, business risks, or other such abstractions" – both non –physical objects.
As a result of this ruling and Alice, some commentators have started concluding that previous business patent strategies to US software patents should be totally changed/reversed. It is argued that today, to not incur a near-insurmountable § 101 objection, it might be worth dividing an invention into several narrower, clearly-defined embodiments which are to be submitted as separate patent applications, as opposed to a more traditional strategy of filing an initial broad claim to the invention and whittling it down during prosecution (because now if there is valid reason to whittle it down, there is probably a valid reason to raise a § 101 objection).
While this may be a bit premature, it is worth noting that the USPTO had prepared a Notice for Subject-Matter-Eligibility Guidance in light of Alice, but that the USPTO and White House is now reviewing that notice based upon Ultramercial and will be released “as soon as we can.”
Author:
Stefano John, European Patent Attorney
Experiences：
European Patent Attorney, Bryers
Trainee European Patent Attorney, Bugnion SpA
Trainee European Patent Attorney, Notabartolo & Gervasi
Internship, EPO
