Summary
Claims of US patent 7,346,545 in the name of Ultramercial, Inc. was
found not to be patent eligible subject matter under 35 USC 101 because they
are directed to an abstract idea implemented using routine and conventional
activity.
Comments
- Adding merely novel or routine components to a claimed idea does not necessarily turn an abstract idea into something concrete and patent eligible. A claim that recites an abstract idea must include additional features to ensure that the claim is more than a drafting effort designed to monopolise the abstract idea. Claims that instruct the practitioner to implement an abstract idea with routine conventional activities is insufficient to transform a patent-ineligible abstract idea into patent eligible subject matter.
- Not all software-based patents will necessarily be patent inelligible.
Broad description of the invention
The ‘545 patent claims methods that are 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.
Characteristic Claim
1. A method for distribution of
products over the Internet via a facilitator, said method comprising the steps
of:
a first step of receiving, from a
content provider, media products that are covered by intellectual-property
rights protection and are available for purchase, wherein each said media
product being comprised of at least one of text data, music data, and video
data;
a second step of selecting a sponsor
message to be associated with the media product, said sponsor message being
selected from a plurality of sponsor messages, said second step including
accessing an activity log to verify that the total number of times which the
sponsor message has been previously presented is less than the number of
transaction cycles contracted by the sponsor of the sponsor message;
a third step of providing the media
product for sale at an Internet website;
a fourth step of restricting general
public access to said media product;
a fifth step of offering to a
consumer access to the media product without charge to the consumer on the
precondition that the consumer views the sponsor message;
a sixth step of receiving from the
consumer a request to view the sponsor message, wherein the consumer submits
said request in response to being offered access to the media product;
a seventh step of, in response to
receiving the request from the consumer, facilitating the display of a sponsor
message to the consumer;
an eighth step of, if the sponsor
message is not an interactive message, allowing said consumer access to said
media product after said step of facilitating the display of said sponsor
message;
a ninth step of, if the sponsor
message is an interactive message, presenting at least one query to the
consumer and allowing said consumer access to said media product after
receiving a response to said at least one query;
a tenth step of recording the
transaction event to the activity log, said tenth step including updating the
total number of times the sponsor message has been presented; and
an eleventh step of receiving
payment from the sponsor of the sponsor message displayed.
Details
This decision was a reversal of an earlier decision by the same
court, in view of the added benefit of the US Supreme Court’s reasoning in Alice Corp. v. CLS Bank
International, 573
U.S. __, 134 S. Ct. 2347 (2014).
Their Honours applied the “framework for distinguishing patents that
claim [patent ineligible] laws of nature, natural phenomena, and abstract ideas
from those that claim patent-eligible applications of those concepts”
identified by Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. __, 132 S. Ct. 1289
(2012) and developed by Alice. In a first step, “we determine whether the claims at issue
are directed to one of those patent ineligible concepts”. If not the claims pass muster under 35 USC
101 of the US patents statute, “Inventions Patentable”. Then, in the second
step, if we determine that the claims at issue are directed to one of those
patent-ineligible concepts, we must determine whether the claims contain “an
element or combination of elements that is ‘sufficient to ensure that the
patent in practice amounts to significantly more than a patent upon the
[ineligible concept] itself.”
Their Honours in applying the first step considered that the ordered
combination of steps of claim 1 recite an abstract idea, that is an idea having no particular concrete or
tangible form. The 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. Certain additional
limitations added a degree of particularity (e.g. the activity log), however
the abstract idea remained unchanged, that is the concepts embodied with these
additional limitations describe only the abstract idea of showing an
advertisement before delivering fee content.
Their Honours declined to agree with Ultramercial that the addition of
merely novel or non-routine components to the claimed idea necessarily turns an
abstraction into something concrete.
Noting that at some level, all invention embody, use, reflect,
reflect upon, or apply laws of nature, natural phenomena, or natural ideas,
their honours did not purport to state that all claims in all software-based
patents will necessarily be directed to an abstract idea.
Their Honours in applying the second step were not of the opinion
that the claims do significantly more than simply describe the abstract method,
quoting Mayo. The claims do not contain
an “inventive concept” to “transform” the claimed abstract idea into
patent-eligible subject matter, as set forth by Alice. The transformation of an abstract idea into patent-eligible
subject matter requires more than simply stating the abstract idea in while
adding the words apply it. A claim that recites an abstract idea must include
additional features to ensure that the claim is more than a drafting effort
designed to monopolise the abstract idea. Additional ideas in the claims must be
more than well-understood, routine, conventional activity. Their Honours were of the view that the claimed
limitations were simply instructing the
practitioner to implement the abstract idea with routine, conventional activity
[emphasis added]. Adding routine additional steps such as updating an activity log,
requiring a request from the consumer to view the ad, restrictions on public
access, and use of the Internet does not transform an otherwise abstract idea
into patent-eligible subject matter. Instead, the claimed sequence of steps
comprises only “conventional steps, specified at a high level of generality,”
which is insufficient to supply an “inventive concept.” as described by Alice and Mayo. The steps of consulting and updating an activity log
represent insignificant “data-gathering steps” Cybersource Corp c Retail Decisions, Inc, 654 F.3d 1366, 1370 (Fed/
Cir. 2011), and add nothing of practical significance to the underlying
abstract idea. Restricting public access also represents only insignificant
pre-solution activity which is also not sufficient to transform an otherwise
patent-ineligible abstract idea into patent-eligible subject matter. The
claims’ invocation of the Internet also adds no inventive concept Alice.
Narrowing the abstract idea of using advertising as a currency to the
internet is an attempt to limit the use to a particular technological
environment, which is insufficient to save a claim Alice. Given the prevalence of the Internet, implementation of an
abstract idea on the Internet in this case is not sufficient to provide any
“practical assurance that the process is more than a drafting effort designed
to monopolize the [abstract idea] itself.” Mayo, 132 S. Ct. at 1297.
While the “machine or transformation
test” set out in In re Bilski, 545 F.3d
943, 954 (Fed. Cir. 2008) is not the sole test it can provide a useful cue
for the second step. The claims are not tied to any particular
machine or apparatus, only a general purpose computer. Adding a computer to
otherwise conventional steps does not make an invention patent-eligible. Manipulations
of “public or private legal obligations or relationships, business risks, or
other such abstractions cannot meet the test because they are not physical
objects or substances, and they are not representative of physical objects or
substances Bilski – consequently the
claims do not transform any article to a different state or thing.