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Federal Circuit to Reconsider Internet Process Patents

May 25, 2012

On May 21, 2012, the Supreme Court ordered the Federal Circuit to reconsider a decision related to a method for allowing Internet users to view copyrighted material for free in exchange for watching advertisements. At stake is whether a process of this sort can be patented at all, even if it is new and not obvious in view of the prior art.

The invention was approved by the USPTO, resulting in US patent 7,346,545 owned by Ultramercial. In general, the claims of the patent relate to a method in which a user accesses a website and requests to see certain content, but is only allowed to view the content for free after agreeing to view a sponsored message. There are certain additional technicalities related to tracking the activities in a log and offering items for payment. Ultimately the issue seems to be whether these additional technicalities are important enough to result in a specific application of the general principle, or are so superficial that the patent encompasses the entirety of the general principle.

After the validity of the patent was challenged, the Federal Circuit Court of Appeals believed the invention was patent-eligible because the claims were drawn to specific applications of business principles, using computer hardware tp do it. If they had been drawn to more abstract principles then the court perhaps would have invalidated the patent. But the Supreme Court has recently been scrutinizing patents with claims that are arguably drawn to abstract principles and laws of nature. Generalized notions such as “buy low, sell high” or “watch for free if you will watch an advertisement” are too abstract to be patented; it is only when they are applied to a more specific environment, with particularized implementation details, that the Supreme Court considers them to be patentable. The Supreme Court had recently reached that conclusion in Mayo v. Prometheus, a case involving a patent characterized as administering a drug in an amount high enough to be effective but low enough to avoid side effects. That general notion was also considered to be a law of nature, without sufficient additional details accompanying the principle within the patent to be able to characterize the patent as a specific application rather than an effort to monopolize the law of nature.

In view of the Mayo decision, the Federal Circuit has been tasked with revisiting the patentability of the Internet patent in WildTangent v. Ultramercial. Considering the treatment in Mayo, the message to the Federal Circuit may be to perform an exacting and skeptical review of Internet patents that seek broad applications of generalized principles.

filed in: Intellectual Property

Attorneys

Lawrence D. Graham

Lawrence D. Graham

Our attorneys regularly produce substantive memoranda and news, addressing legal advancements in Trademarks, Intellectual Property, Patents and Litigation.

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